Ex Parte Schroeder et al

Board of Patent Appeals and Interferences

Sep 27, 2010

11026345 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMISON C. SCHROEDER, JEFFREY JOHNSON,
PAUL W. KELLEY, JAMES S. BAUMGARTNER,
THOMAS L. BAHENSKY, SCOTT JOHN FLETCHER,
MARK L. DEJONG, JOSE L. DELEON, and BRENT M. CHAMBERLAIN
____________

Appeal 2009-008435
Application 11/026,345
Technology Center 3700
____________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Jamison C. Schroeder et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-20, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellants’ claimed invention is a vehicle control system for
minimizing white smoke exhaust. Spec. 1, para. [0001]. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A control system for controlling a variable nozzle turbo
(VNT) for an engine, comprising:
a normal boost module that calculates a normal boost;
a supplemental boost module that calculates a
supplemental boost defined by a net increase in boost;
an offset boost module that generates an offset boost
signal for said VNT based on said normal boost and said
supplemental boost; and
a control module that adjusts VNT boost based on said
offset boost signal.
THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 1-20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.2

2 While the Examiner’s Answer recites only independent claims 1, 10, and
16 in the statement of the rejection (Ans. 3), Appellants correctly recognize
that the rejection implicitly includes dependent claims 2-9, 11-15, and 17-20
by virtue of their dependence from claims 1, 10, and 16, respectively. App.
Br. 1 (stating that “[c]laims 1-20 are rejected under 35 U.S.C. § 112, first
paragraph.”)
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ISSUE
The issue before us is whether Appellants’ original disclosure conveys
with reasonable clarity to those skilled in the art that, as of the filing date
sought, Appellants were in possession of the subject matter of independent
claims 1, 10, and 16.

ANALYSIS
The Examiner found that claims 1, 10, and 16 do not comply with the
written description requirement because the original disclosure does not
provide adequate written descriptive support for the limitation of
“supplemental boost defined by a net increase in boost.” Ans. 3.
Independent claim 1 is directed to a control system for controlling a
variable nozzle turbo (VNT) for an engine. Independent claims 10 and 16
are directed to methods for operating an internal combustion engine having a
turbocharger that generates boost to the engine. Each of claims 1, 10, and 16
call for a “supplemental boost defined by a net increase in boost.”
Appellants’ Specification does not explicitly describe a supplemental
boost as “defined by a net increase in boost.” This subject matter need not
be described explicitly. In re Smith, 481 F.2d 910, 914 (CCPA 1973). The
requirement is that the Specification must “clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.”
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010)(en banc) (quoting from Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991)).
Appellants’ Specification describes the known problem that when the
temperature in the cylinders of a diesel engine is below normal operating
temperature, combustion is inefficient, fuel is not completely burned, and
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white smoke is exhausted from the engine. Spec. 2, para. [0005].
Appellants’ Specification describes a system and a method using a
turbocharger to increase airflow to the engine, thus increasing engine
temperature and promoting combustion efficiency that reduces white smoke.
Spec. 7, para. [0021]. Appellants’ Specification further describes an engine
control system 10 that includes an engine 12, a control module 14, and a
turbocharger 18. Spec. 4-5, para. [0016]; fig. 1. The control module 14
communicates with the vane solenoid 28 to selectively reposition the vanes
19 of the turbocharger 18 to vary the amount of air delivered to the engine
based on the offset boost. Spec. 5, para. [0018]; id. at 7, para. [0021]; id. at
9, para. [0025].
Appellants’ Specification describes that the total boost applied (offset
boost) by the turbocharger 18 is the summation of normal boost and
supplemental boost. Spec. 3, para. [0006]; id. at 9, para. [0025]; figs. 2B, 3
(step 76). Normal boost “represents the airflow injected into the intake
manifold 15 by the turbocharger 18 based on normal operating conditions of
the engine 12.” Spec. 8, para. [0024]. In other words, normal boost is the
amount of boost (amount of air introduced into an engine by the
turbocharger) for warm engine running conditions. Spec. 2, para. [0004]; id.
at 4, para. [0015]. Supplemental boost “is the additional boost that is
necessary to reduce white smoke exhausted through the exhaust 17.” Spec.
8, para. [0024]. A person of ordinary skill in the art would recognize, that
when normal boost is not providing sufficient airflow to the engine to
prevent production of white smoke, supplemental boost is added (causing a
net increase in boost), increasing airflow, raising engine temperature and
combustion efficiency, and eliminating the white smoke.
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We find Appellants’ disclosure adequately conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellants
were in possession of a control system and a method of operating an internal
combustion engine, that includes “supplemental boost defined by a net
increase in boost” as called for in claims 1, 10, and 16. As such, we will not
sustain the rejection of claims 1, 10, and 16 or their dependent claims.
CONCLUSION
Appellants’ original disclosure conveys with reasonable clarity to
those skilled in the art that, as of the filing date sought, Appellants were in
possession of the subject matter of independent claims 1, 10, and 16.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-20.

REVERSED

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