Ex Parte Pantring et al

Patent Trial and Appeal Board

Jun 30, 2016

12737668 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121737,668 05/09/2011
24972 7590 07/05/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Juergen Pantring
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.
10191/6839 5568
EXAMINER
LAGUARDA,GONZALO
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN P ANTRING, RUEDIGER WEISS,
JEAN-MARC TONYE DION, ARMIN HUBER, and
KARSTEN KROEPKE
Appeal2014-003990
Application 12/737 ,668
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Juergen Pantring et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 112, second
paragraph, claims 11 and 18 for indefiniteness; and under 35 U.S.C.
§ 102(b) claims 11, 13, 17, 18, and 20 as anticipated by Akimoto (EP
1852594 Al; pub. Nov. 7, 2007); 1' 2 and under U.S.C. § 103(a): (1) claims 14
1 The Examiner refers to the Akimoto reference as "Harada." See Final Act.
4. Appellants refer to the Akimoto reference as "Akimoto." See Appeal Br.
3. For consistency, we shall refer to the Akimoto reference as "Akimoto."
2 The Examiner includes claims 12 and 19 in the heading of this rejection.
See Final Act. 4. However, claims 12 and 19 have been cancelled. See
Appeal2014-003990
Application 12/737 ,668
and 15 as unpatentable over Akimoto and Surnilla (US 6,691,669 B2; iss.
Feb. 17, 2004); and (2) claim 16 as unpatentable over Akimoto and
Hartmann (US 8,091,538 B2; iss. Jan.IO, 2012). Claims 1-10, 12, and 19
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a device and method for
detecting a running internal combustion engine in a hybrid vehicle. See
Spec. Title. Claims 11 and 18 are independent.
Claim 11 is illustrative of the claimed subject matter and recites:
11. A method for detecting the operating status of an internal
combustion engine in a hybrid vehicle, the hybrid vehicle having
the internal combustion engine as a first drive unit and also
having a second drive unit, the method comprising:
actively introducing a selected interference signal into an
operation sequence of the internal combustion engine;
evaluating a response of the internal combustion engine to
the selected interference signal; and
determining that the internal combustion engine is not
operating if no response of the internal combustion engine to the
selected interference signal is detected;
wherein at least one combustion parameter of the internal
combustion engine is modified and an irregular running of the
internal combustion engine is monitored, and wherein if no
change in the irregular running is detected in response to the
change in the combustion parameter, determining that constant
misfiring is occurring on all cylinders of the internal combustion
engme.
Amendment filed Jan. 29, 2013.
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Appeal2014-003990
Application 12/737 ,668
Claims 11 and 18
ANALYSIS
Indefiniteness
The Examiner determines that claims 11 and 18 "fail[] to correspond
in scope with that which [Appellants] regard as the invention." Final Act. 3.
According to the Examiner, (1) Appellants' Specification "has equated
interference signal and combustion parameter to have overlapping scopes,
operation sequence and running of the internal combustion sequence are
overlapping as well"; and (2) "[ o ]ne with ordinary skill in the art would
understand that no response from an engine and no change in the engine can
have overlapping scopes that would allow someone to see these steps as
having the same data but coming to two different conclusions as to what
they mean." Ans. 2-3. The Examiner determines that "the engine is not
operating if there is no change to an interference signal/ combustion
parameter change." Final Act. 3.
Appellants contend that "if there is no change in the irregular running
of the internal combustion engine, then constant misfiring is occurring;
however, if there is no response to the change, then the internal combustion
engine is not operating. Therefore ... one skilled in the art would
understand the features of claims 11 and 18." Reply Br. 2 (citing Spec. 2, 1.
26 - 3, 1. 8, 4:5-32; see also Appeal Br. 3.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). At the outset,
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Application 12/737 ,668
Appellants' Specification describes: (1) "an interference signal may be
generated easily by a change in the software in the engine control unit"
(Spec. 4: 19--20); (2) "[t]he firing angle of at least one cylinder of the internal
combustion engine is advantageously adjusted actively as a combustion
parameter" (Spec. 3:16-18); and (3) "[a]n injection quantity is adjusted
briefly as the combustion parameter" (Spec. 4:3--4). Based on the foregoing,
a skilled artisan would understand that an interference signal and a
combustion parameter are not the same (i.e., interchangeable). See, e.g.,
original claims 1 and 2 (filed Feb. 4, 2011). Appellants' Specification
further describes: (1) "[i]fthere is no response of the internal combustion
engine to the interference signal, it is then concluded that the internal
combustion engine is not operating" (Spec. 2:22-25, 4:10-19); (2) "[i]fthere
is no change in irregular running due to the change in the combustion
parameter, it is concluded that constant misfiring is occurring on all
cylinders of the internal combustion engine" (Spec. 2:29--32, 4:23-28); and
(3) "[i]f the internal combustion engine is not running independently, ... the
internal combustion engine will not respond to the change in the combustion
parameters. This means that increased irregular running activities are not
detectable, which is thus detected as an error [and it is established that the
internal combustion engine is not operating]." (Spec. 3:3-8, 4:28-32).
In other words: (1) ifthe internal combustion engine does not respond
to the selected interference signal (i.e., no response is detected) then the
internal combustion engine is not operating; (2) if the internal combustion
engine does respond to the change in the combustion parameter then no
change in the irregular running of the internal combustion engine is detected
meaning that constant misfiring is occurring on all cylinders of the internal
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Appeal2014-003990
Application 12/737 ,668
combustion engine; and (3) if the internal combustion engine does not
respond to the change in the combustion parameter then increased irregular
running of the internal combustion engine is not detected meaning that the
internal combustion engine is not operating. Based on the foregoing, we
agree with Appellants that a skilled artisan would understand the scope of
the claims of the subject application. See Appeal Br. 3; see also Reply Br. 2.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 11 and 18 for indefiniteness.
Anticipation by Akimoto
Claims 11, 13, 17, 18, and 20
The Examiner finds that "delayed ignition timing" of Akimoto
constitutes both the interference signal and the combustion parameter of
independent claim 11. See Final Act. 4 (citing Akimoto, claim 3 ).
Appellants contend that Akimoto does not disclose an interference
signal as called for in the claims. See Appeal Br. 4; see also Reply Br. 4.
Appellants' argument is persuasive. At the outset, the Examiner does
not address Appellants' argument in the Answer. See Ans. 3. Further, as
noted above, the interference signal and combustion parameter of the subject
invention are not the same (i.e., interchangeable). Here, the Examiner
improperly relies on the same element (i.e., "delayed ignition timing" of
Akimoto) for teaching distinct claim limitations (i.e., the interference signal
and the combustion parameter). See CAE Screenplates Inc. v. Heinrich
Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) ("In the
absence of any evidence to the contrary, we must presume that the use of
these different terms in the claims connotes different meanings."). As such,
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Application 12/737 ,668
the Examiner fails to establish by a preponderance of the evidence that
Akimoto anticipates the method of claim 11.
Independent claim 18 calls for a device including language similar to
that discussed for claim 11. See Appeal Br. Claims App. 2. The Examiner
relies on similar unsupported findings for claim 18 as discussed above in
claim 11. See Final Act. 6-7. Thus, the Examiner's findings with respect to
Akimoto are deficient for claim 18 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 11 and 18 and their respective
dependent claims 13, 17, and 20 as anticipated by Akimoto.
Obviousness over Akimoto and either Surnilla or Hartman
Claims 14-16
The Examiner's obviousness rejections of claims 14--16 are each
based on the same unsupported findings discussed above with respect to
independent claim 11. See Final i~ .. ct. 8-9. The Examiner does not rely on
Sumilla or Hartman to remedy the deficiencies of Akimoto. Accordingly,
for reasons similar to those discussed above for claim 11, we do not sustain
the Examiner's obviousness rejections of claims 14--16.
DECISION
We REVERSE the decision of the Examiner to reject claims 11, 13-
18, and 20.
REVERSED
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