Ex Parte MIZUKAMI et al

Patent Trial and Appeal Board

Jul 31, 2017

13044059 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/044,059 03/09/2011 Hiroshi MIZUKAMI Q123369 1069
23373 7590 08/02/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
LAGUARDA, GONZALO
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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
following e-mail address(es):
PPROCESSING@SUGHRUE.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI MIZUKAMI, HISANORINOBE,
TORU IKED A, and YOSHIYUKI SERA
Appeal 2016-003561
Application 13/044,059
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hiroshi Mizukami et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 4, 8, 14, and 18.
See Appeal Br. 11—23. Claims 2, 3, 5—7, and 9 have been canceled. See
Amendment dated Feb. 14, 2014. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Mitsubishi
Electric Corporation. Appeal Br. 2.
Appeal 2016-003561
Application 13/044,059
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to an intemal-combustion-
engine electronic control system.” Spec. 11. Claims 1, 8, 14, and 18 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. An intemal-combustion-engine electronic control system
comprising:
a power switching device that applies or shuts off a
primary current of an ignition coil of an internal combustion
engine so that at the secondary side of the ignition coil, there is
generated a voltage for making an ignition plug of the internal
combustion engine produce a spark discharge; and
a control unit that turns on or off the power switching
device,
wherein the control unit is provided with a circuit unit
that softly shuts off the power switching device so as to prevent
the ignition plug from producing the spark discharge, in the
case where at least one of the power switching device, the
control unit, the ignition coil, and the ignition plug is in a
predetermined state; and based on a change in the conduction
state of the power switching device, the characteristics of the
soft shutoff is changed halfway through the shutoff operation,
wherein the circuit unit includes a capacitor, a first slow-
discharge circuit that makes electric charge in the capacitor
discharge with a first predetermined time constant, and a second
slow-discharge circuit that makes electric charge in the
capacitor discharge with a second predetermined time constant
that is smaller than the first predetermined time constant,
wherein when the soft shutoff is started, the control unit
causes electric charge in the capacitor to discharge by use of the
second slow-discharge circuit so as to make the power
switching device begin a soft shutoff operation, and then causes
electric charge in the capacitor to discharge by use of the first
slow-discharge circuit, until completion of the soft shutoff
operation, and
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Application 13/044,059
wherein in the control unit, the circuit unit is provided
with a function of suppressing a secondary voltage from
making the ignition plug produce a spark discharge when
energization of the ignition coil with the primary current is
started.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kesler US 5,819,713 Oct. 13, 1998
REJECTIONS
The following rejections are before us for review:2
I. Claim 83 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Final
Act. 2—3.
II. Claims l,4 8, 14,5 and 18 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Id. at 3.
2 We note that a rejection of claims 14—17 under 35 U.S.C. § 103(a) as
being unpatentable over Kesler and Bowling (US 6,575,134 Bl, issued
June 10, 2003) has been withdrawn by the Examiner and, thus, is not before
us for review as part of the instant appeal. See Ans. 3.
3 We note that claims 10-13 depend from independent claim 8 and,
thus, include all of the limitations of claim 8. See Appeal Br. 27—28, Claims
App.
4 We note that claim 4 depends from independent claim 1 and, thus,
includes all of the limitations of claim 1. See id. at 26, Claims App.
5 We note that claims 15—17 depend from independent claim 14 and,
thus, include all of the limitations of claim 14. See id. at 30, Claims App.
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III. Claims 1, 4, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kesler. Id. at 4—6.
ANALYSIS
Rejection I— Claim 8 as failing to comply with the enablement requirement
In rejecting independent claim 8 as failing to comply with the
enablement requirement, the Examiner determined that “[t]he predetermined
condition critical or essential to the practice of the invention, but not
included in the claim(s) is not enabled by the disclosure.” Final Act. 2
(citing In re Mayhew, 527 F.2d 1229 (CCPA 1976)). More specifically, the
Examiner explained that “the system determines the first circuit or the
second circuit to perform the soft shut down according the predetermined
condition,” but “[t]he claims and [Specification do not discuss what the
condition would be to choose one circuit or the other.” Id. at 2—3 (emphasis
added). According to the Examiner, “[t]he rejection, based on lack of
enablement, was not due to undue experimentation required[;] it was due to
a lack of description on how to make the claimed invention.” Id. at 10
(citing MPEP § 2164.01(b)) (emphasis added).
The Examiner’s enablement rejection of claim 8 appears to be based
on a lack of adequate written description support for the particular
conditions (i.e., predetermined states) that the control unit uses to select
either of the first and second slow-discharge circuits. However, insofar as
the substance of an enablement rejection is concerned, the dispositive issue
is whether Appellants’ disclosure, considering the level of ordinary skill in
the art as of the date of the application, would have enabled a person of such
skill to make and use the claimed invention without undue experimentation.
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In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982). Some factors to be
considered in determining whether a disclosure would require undue
experimentation include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). Here, the Examiner’s rejection does not
discuss any of the factors set forth in Wands as they relate to undue
experimentation. Although the Examiner is not required to provide a
discussion as to every Wands factor, it is not apparent from the Final Action
or the Answer that any of these factors have been considered in the context
of this enablement rejection.
As discussed above, the Examiner’s rejection relies on the
determination that the claims do not include the predetermined condition
(i.e., “predetermined state”) that is critical or essential for selecting one of
the two slow-discharge circuits (i.e., “based on the predetermined state”).
See Final Act. 2. To the extent that this determination appears to relate to
the breadth of the claims, we recognize that claim 8 is broad in that it does
not specify what the predetermined state is, but only recites that the slow-
discharge circuit selection is simply “based on the predetermined state.”
However, the Examiner has not explained how the breadth of claim 8 would
relate to undue experimentation. Moreover, regarding the purported “lack of
description on how to make the claimed invention” {id. at 10), the Examiner
did not articulate any findings or analysis to show that, in the absence of
such description in the Specification, a person of ordinary skill in the art
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would have been unable to make and use the claimed invention without
undue experimentation.
Moreover, the facts before us in the present appeal do not support the
Examiner’s reliance on Mayhew for the proposition that the claims are not
enabled. See Final Act. 2. In that case, the court found that the specification
provided an explicit disclosure that a particular step was required for the
claimed invention to be operable, but such step was not recited in the claims,
the omission of which rendered the claims unsupported by an enabling
disclosure. See Mayhew, 527 F.2d at 1232—33. Here, in contrast to
Mayhew, the Examiner has conceded that Appellants’ Specification does not
contain any mandatory language for operability of the invention that is not
found in the claims. In particular, the Examiner stated that “[t]he claims and
specification do not discuss what the condition would be to choose one
circuit or the other.” Final Act. 3 (emphasis added). Therefore, the
Examiner has not shown that the language of the Specification makes clear
that any particular condition (i.e., predetermined state) for choosing one
circuit or the other is critical for the invention to function as intended, but
was not included in the claims.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing that independent claim 8 lacks enablement. On
this basis, we do not sustain the rejection of claim 8 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Rejection II— Claims 1, 8, 14, and 18 as being indefinite
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
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test the claims for reasonable precision.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)).
The Examiner determined that “[t]he term ‘slow-discharge’ in
claims 1, 8, 14 and 18 is a relative term which renders the claim[s]
indefinite.” Final Act. 3. According to the Examiner, the term “is not
defined by the claim[s], the [Specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention.” Id.
Appellants argue that, in light of the Specification, a person of
ordinary skill in the art would understand “the term ‘slow-discharge’ to
mean a discharge that was not instantaneous/near-instantaneous, but instead
bounded or defined by some defined time constant or slew rate (i.e., ‘a
predetermined time constant’) such that the spark discharge is not produced
(i.e., ‘so as to prevent the ignition plug from producing the spark
discharge’).” Appeal Br. 15 (emphasis omitted). In particular, Appellants
assert that paragraphs 18, 29, 31, 38, and 42 of the Specification “defme[]
the ‘slow-discharge circuit(s)’ as circuits that make electric charge in the
capacitor discharge with predetermined time constants to perform a soft
shutoff which ‘prevents the ignition plug from producing the spark
discharge’).” Id. (emphasis omitted). Additionally, “Appellants submit that
the phrase ‘slow discharge circuit’ is a known term of art,” which “is well
understood, and has a known and established meaning to those of skill in the
art.” Id. We are persuaded by Appellants’ argument.
The Specification describes that “[t]he first slow-discharge circuit 15
and the second slow-discharge circuit 16 configure a circuit unit that softly
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shuts off the power switching device 103 in order to prevent the ignition
plug 3 from producing a spark discharge.” Spec. 118; see also id., 129
(describing that “the electric charge stored in the capacitor 17 is slowly
discharged by way of the first slow-discharge circuit 15 and the second
slow-discharge circuit 16”). The term “slow-discharge circuit” appears to be
a term of art in the field of electronics, and Appellants’ use of the term in the
Specification or claims is consistent with this term of art.
Considering the claims, read in light of the Specification, a person
having ordinary skill in the art would understand “slow-discharge,” as
recited, to require a discharge of the capacitor according to a predetermined
time constant that prevents the ignition plug from producing a spark. In
other words, it would be apparent to one of ordinary skill in the art that each
of the first and second slow-discharge circuits recited in the claims slowly
discharges the capacitor (according respective smaller/larger predetermined
time constants) in order to prevent a spark, and, thus, facilitate a soft shutoff.
The Examiner did not sufficiently explain why the scope of the identified
claim language would be unclear to one of skill in the art and, thus, did not
establish that independent claims 1, 8, 14, and 18 are indefinite.
Accordingly, we do not sustain the rejection of claims 1, 8, 14, and 18
under 35U.S.C. § 112, second paragraph, as being indefinite.
Rejection III— Claims 1, 4, and 18 as unpatentable over Kesler
Independent claim 1 recites, in relevant part, an internal combustion
engine electronic control system comprising “a first slow-discharge circuit
that makes electric charge in the capacitor discharge with a first
predetermined time constant, and a second slow-discharge circuit that makes
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electric charge in the capacitor discharge with a second predetermined time
constant that is smaller than the first predetermined time constant.” Appeal
Br. 25, Claims App. Independent claim 18 recites a similar limitation. Id. at
31, Claims App. Appellants argue that Kesler does not disclose first and
second slow-discharge circuits. See id. at 18—23; Reply Br. 5—6. We agree.
In rejecting the claims, the Examiner found that Kesler discloses, in
relevant part, “a first slow-discharge circuit (Ql) that makes electric charge
in the capacitor discharge with a predetermined time constant, and a second
slow-discharge circuit (Col. 10, lines 48-64) that makes electric charge in the
capacitor discharge with a time constant that is smaller than the time
constant of the first slow-discharge circuit.” Final Act. 4 (boldface omitted).
The Examiner explained that Kesler’s “Fig. 3b Vcext describe[s] the voltage
being reduced to a certain level, 168,.. . then a slow discharge, 170, and
another discharge that is faster at 172.” Id. at 11.
Appellants persuasively assert that “Kesler only discloses a single
slow-discharge circuit.” Appeal Br. 19 (emphasis omitted). In particular,
Appellants assert that “discharge 170 is illustrated as a slow discharge, while
the discharge 172, and the discharge 168 are illustrated as instantaneous or
near-instantaneous discharges.” Id. at 21 (emphasis omitted) (citing Kesler,
Fig. 3B). According to Appellants, “Kesler specifically uses the term ‘slow’
to describe only the discharge region 170 and not to describe the discharge
regions 168 and 172.” Id. (emphasis omitted).
Kesler discloses that, “[a]t time t4, the capacitor voltage Vcext is
simultaneously reduced to a value V//+ 168 and forced through voltage
follower FI and voltage limiter 106 onto GDI.” Kesler, col. 8,11. 13—15.
Kesler discloses that, “[o]nce forced onto GDI, the voltage Vcext on
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capacitor Cext is slowly discharged via current source 12 as shown by linear
portion 170 of signal Vcext•” Id., 11. 18—20 (emphasis added); see id.,
Fig. 3B. Kesler also discloses that, “[w]hen Vcor reaches Yssdref,
capacitor Cext is completely discharged, as shown by portion 172 of
signal Vcext, in preparation for the next dwell event.” Id., 11. 24—27.
According to Kesler, “[t]he controlled soft-shutdown of IGBT1 therefore
does not result in the generation of a spark event at spark plug SP1.” Id.,
11. 32—34. In other words Kesler discloses a soft shutoff in which a slow-
discharge circuit slowly discharges the capacitor (i.e., portion 170) so as not
to produce a spark.
Although we appreciate the Examiner’s position (see Ans. 11) that
Figure 3B shows portion 172 of signal Vcext as another capacitor discharge
that is faster than the slow-discharge in portion 170 (i.e., having a smaller
time constant), the Examiner does not identify, nor do we discern, any
disclosure in Kesler that either of voltage reductions 168 and 172
corresponds to another slow-discharge circuit. Instead, we agree with
Appellants that Figure 3B of Kesler appears to show instantaneous or near-
instantaneous discharges (i.e., steps) at portions 168 and 172 of signal Vcext-
See Appeal Br. 20-22.
Moreover, the Examiner’s reliance on Kesler’s transistor Q1 as
corresponding to a slow-discharge circuit is unavailing. See Final Act. 4.
Kesler discloses that “[t]he action of turning on Q1 causes a rapid discharge
therethrough of capacitor Cext” Kesler, col. 9,11. 39-41 (emphasis added).
Although the Examiner points to paragraph 35 of Appellants’ Specification
as evidence that the “slow-discharge” recited in the claims reads on the rapid
discharge of Kesler (see Final Act. 12), the cited portion of the Specification
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does not support the Examiner’s position. Namely, the Specification
describes a soft shutoff function in which a “slow discharge by the second
slow-discharge circuit 16, which is relatively rapid, is started, . . . [and,]
after the time point tl2, [a] slow discharge by the first slow-discharge
circuit 15, which is relatively slow, is performed.” Spec. 135 (emphasis
added). Although the Specification does use the term “rapid” in describing
second slow-discharge circuit 16, the description explicitly indicates that the
term “rapid” is used to describe slow-discharge circuit 16 relative to first
slow-discharge circuit 15. Thus, we understand the Specification to mean
that, to the extent that the discharge of slow-discharge circuit 16 is
“relatively rapid” compared to the discharge of slow discharge circuit 15,
both circuits provide a slow discharge of the capacitor (according respective
smaller/larger predetermined time constants) so as to produce no spark, and,
thus, facilitate a soft shutoff.
Therefore, the Examiner has not established by a preponderance of the
evidence that Kesler, as relied upon in the rejection presented, teaches or
suggests a first slow-discharge circuit, and a second slow-discharge circuit,
as required by the claims. Also, the Examiner did not articulate any reason
why it might have been obvious to modify Kesler to provide a second slow-
discharge circuit. See Final Act. 4—5. Rejections based on obviousness must
rest on a factual basis; in making such a rejection, the Examiner has the
initial burden of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
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Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case of obviousness based on Kesler. On
this basis, we do not sustain the rejection of independent claims 1 and 18,
and of dependent claim 4, under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claim 8 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We REVERSE the Examiner’s decision rejecting claims 1, 8, 14, and
18 under 35 U.S.C. § 112, second paragraph, as being indefinite.
We REVERSE the Examiner’s decision rejecting claims 1, 4, and 18
under 35 U.S.C. § 103(a) as being unpatentable over Kesler.
REVERSED
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