Ex Parte Scott et al

Patent Trial and Appeal Board

Nov 21, 2014

11786296 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/786,296 04/11/2007 Jeffery Scott 81155252 7675
28866 7590 11/21/2014
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
MANCHO, RONNIE M
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
11/21/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFERY SCOTT, JOSEPH J. GALLO, and
DOUGLAS R. CECIL
____________________

Appeal 2012-009904
Application 11/786,296
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
The claims are directed to controlling the operating states of a torque
converter clutch in an automatic transmission. Claim 1, reproduced below,
is illustrative of the claimed subject matter on appeal:
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Application 11/786,296
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1. A method for controlling a vehicle torque converter clutch,
comprising:
using a controller to
(a) determine whether the vehicle is ascending a
grade, operating in a loaded condition or not operating in
a curve;
(b) start a timer upon command to inhibit
disengagement of the clutch;
(c) if the vehicle is operating in a curve, prevent
disengagement of the clutch until the timer expires;
(d) allow disengagement of the clutch if any
condition of step (a) is present.

REJECTIONS1
Claims 1–16 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 6.
Claims 1–16 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Id. at 7–8.

ANALYSIS
Written Description Rejection
The Examiner finds that Appellants’ amendment of independent
claims 1 and 9 contains new matter. Ans. 7. Specifically, as to claim 1, the
Examiner finds that the following subject matter is new matter: “using a
controller to (a) determine whether the vehicle is . . . not operating in a
curve;” “using a controller to . . . (b) start a timer upon command to inhibit
disengagement of the clutch;” “using a controller to … (c) if the vehicle is
operating in a curve, prevent disengagement of the clutch until the timer

1 The Examiner’s prior art-based rejections have been withdrawn. See Ans.
4.
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expires;” and “using a controller to … (d) allow disengagement of the clutch
if any condition of step (a) is present.” See id. at 6; Appeal Br. 34, Claims
App. The Examiner further finds that independent claim 9 includes similar
new matter, and therefore, is not supported by the written description as
originally filed. Ans. 7.
Appellants argue that the identified subject matter is supported in their
Specification. Appeal Br. 10. For example, Appellants argue that the step
of claim 1 requiring using a controller to start a timer upon command to
inhibit disengagement of the clutch is supported in the Specification at page
8 (lines 25–28) and in claim 11 as originally filed. Id. Appellants’
Specification states, in describing Figure 4:
If the test at 82 is logically true, indicating that the vehicle is
not operating in a curve, a test is made at 88 to determine
whether a clutch-unlock inhibit timer is expired.
If the clutch-unlock inhibit timer is expired at 88,
indicating expiration of period of predetermined length since
issuing command 62 to inhibit unlocking clutch 60, closed
pedal unlocking of the torque converter clutch 60 is permitted at
90, and the current execution of the algorithm ends at 86.
Spec., 8, ll. 23–29. This disclosure is directed to the expiring of a timer, not
the starting of a timer as recited in Appellants’ amended claim 1. See Ans.
11 (“The claim calls for starting a timer when a particular condition is met.
On the contrary the specification calls for determining whether a timer is
expired based on a totally different condition.”). Thus, Appellants’
argument is unpersuasive.
Claim 11, as originally filed, recited:
The system of claim 9, further comprising:
a timer for measuring the length of a predetermined
period that begins upon engaging of the clutch; and
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wherein the controller is further configured to monitor
the signal produced by the accelerator pedal sensor to determine
the occurrence of a closed accelerator pedal, determine whether
the timer is expired, and allow disengagement of the clutch if
the accelerator pedal is closed and the timer is expired.
Spec., 13, l. 27–14, l. 4. Originally-filed claim 11 required a timer to
begin upon the engaging of the clutch, not upon a command to inhibit
disengagement of the clutch, as recited in amended claim 1. Contrary
to Appellants’ contention, preventing disengagement of the clutch is
not “identical” to engaging the clutch. See Reply Br. 5 (“The claimed
condition for starting the timer is identical to the condition set forth in
the specification.”).
Appellants further argue that their Specification, “at page 8, lines 8–
12, 18–22, and 26–29; and steps 80, 82, 84, 88 and 90 of Figure 4”2
discloses the step of claim 1 requiring using a controller to “allow
disengagement of the clutch if any condition of step (a) [of claim 1] is
present.” Appeal Br. 11. The Specification, at page 8, lines 812, discloses
a converter scheduling algorithm that “determine[s] whether both the
converter clutch 60 is in the engaged state and the grade/tow algorithm, is
currently activated.” Spec., 8, ll. 8–12. Lines 18–22 disclose determining if
the curve inhibit algorithm is active and, if not (which indicates that the
vehicle is not operating in a curve), the command to maintain clutch
engagement is removed. Id. at 8, ll. 18–22. Lines 26–29 disclose that
unlocking the torque converter clutch 60 is permitted upon expiration of the
clutch-unlock inhibit timer. Id. at 8, ll. 26–29. Thus, as the Examiner

2 The cited lines of page 8 of Appellants’ specification describe steps 80, 82,
84, 88 and 90 of Figure 4. See Spec., 8.
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correctly finds, none of the cited sections of Appellants’ Specification
discloses allowing disengagement of the clutch when ascending a grade or
operating in a loaded condition—two of the conditions in step (a) of
amended claim 1. See Ans. 12.
Appellants argue that “[t]he claimed steps ‘allow disengagement of
the clutch if the vehicle is ascending a grade’ and ‘allow disengagement of
the clutch if the vehicle is operating in a loaded condition’ are supported by
a negative result of test 80 and execution of step 84.” Reply Br. 5 (citing
Spec. 8, ll. 1317). The Specification expressly states that “if test 80 is
logically false [that is, a negative result of test 80], indicating that the vehicle
is not operating on a grade or loaded, control moves to step 84 where
unlocking the torque converter clutch 60 can occur, i.e., a command 62 to
maintain clutch 60 engaged is removed.” Spec. 8, ll. 13–15 (emphasis
added). That is, the clutch can be disengaged if the vehicle is not operating
on a grade or with a load. These conditions are the opposite of what is
recited in claim 1. See Ans. 12. Accordingly, the amended subject matter of
claims 1 and 9 constitutes new matter. See id. at 6–7.
For the reasons provided above, we sustain the Examiner’s rejection
of independent claims 1 and 9, and claims 2–8 and 10–16, which depend
directly or indirectly from claims 1 and 9, under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.

Indefiniteness Rejection
The Examiner contends that independent claims 1 and 9 “omit[]
essential structural cooperative relationships of elements, such omission
amounting to a gap between the necessary structural connections,” and
rejects the claims under 35 U.S.C. § 112, second paragraph. Ans. 7–8
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(citing MPEP § 2172.01). Specifically, the Examiner states that “[t]here is
no structural relationship between the timer and the rest of the limitations in
the claims.” Id. at 8.
Appellants argue that “the Examiner has failed to specifically indicate
where the purported incompleteness arises in claims 1 and 9.” Appeal Br.
13. Appellants further state that “[e]ach element and limitation of claims 1
and 9 is supported in the description and is related to another claim element
or limitation of the respective claim.” Id.
The Examiner responds that step (b) of claim 1 recites starting a timer
and step (c) indicates an action “until the timer expires,” but the claim fails
to set an expiration time. Ans. 12. The Examiner contends that “one will
not know when the timer expires as called for in step (C) [and as] such there
is no structural relationship in the limitations of the claims.” Id. at 12–13.
The Examiner further states that the recitation in step (c) regarding the
vehicle operating in a curve is contrary to steps (a) and (d), “which require
that the vehicle should not be ‘operating in a curve.” Id. at 13.
As to the contended contradiction in step (c) as compared to steps (a)
and (d), Appellants correctly note that steps (a) and (d) do not require the
vehicle to be operating not in a curve—these steps merely address actions if
the vehicle is operating in a curve. See Reply Br. 6. As to the claim failing
to recite an expiration time, this omission does not represent an essential
structural cooperative relationship of elements as contended by the Examiner
because one of ordinary skill in the art would understand that the step of
using a controller to start a timer would include providing an expiration
time. Accordingly, the Examiner errs in rejecting independent claims 1 and
9 for omitting essential structural cooperative relationships of elements.
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For the reasons provided above, we do not sustain the Examiner’s
rejection of independent claims 1 and 9, and claims 2–8 and 10–16, which
depend directly or indirectly from claims 1 and 9, under 35 U.S.C. § 112,
second paragraph, for omitting essential structural cooperative relationships
of elements, such omission amounting to a gap between the necessary
structural connections.

Objection to Specification
The Examiner objects to the Appellants’ Specification. Ans. 5.
Specifically, the Examiner objects to the Amendment filed by Appellants on
October 18, 2011 for containing new matter. Id. “[T]he kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirectly, to matters involving the rejection of claims.”
In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971)). In the case under
appeal, this objection to the Specification relates directly to the Examiner’s
rejection of claims 1–16 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. See Ans. 4. Thus, our
decision affirming the written description rejection likewise is dispositive as
to the corresponding new matter objection.

Objection to Drawings
The Examiner objects to the Appellants’ drawings. Ans. 4.
Specifically, the Examiner provides that “[t]he drawings must show every
feature of the invention specified in the claims . . . “the claimed ‘a timer.’”
Id. We do not have jurisdiction to determine the propriety of this objection,
as it does not relate to matters involving the rejection of claims. This
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objection is not an appealable matter, but rather is a petitionable matter. See
In re Hengehold, 440 F.2d at 1403–04.3

DECISION
For the above reasons, we affirm the Examiner’s rejection of claim
1–16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
For the above reasons, we reverse the Examiner’s rejection of claim
1–16 under 35 U.S.C. § 112, second paragraph, as being indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED
llw

3 This objection—that the drawings omit a claimed element—differs from
the Examiner’s rejection of claims for omitting essential interrelationships
between elements, although both relate to the claimed timer. Nor does this
objection relate to the drawings submitted by Appellants on March 20, 2012,
which were not entered by the Examiner and purported to contain new
matter. See Adv. Act. 2 (June 5, 2012).