Ex Parte Shutty et al

Patent Trial and Appeal Board

Mar 30, 2018

12158338 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/158,338 10/01/2008 John Shutty
67424 7590 04/02/2018
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
DKT05165A
(0309.4012.901)
8226
EXAMINER
HAMAOUI, DAVIDE
ART UNIT PAPER NUMBER
3747
MAILDATE DELIVERY MODE
04/02/2018 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 JOHN SHUTTY, VOLKER JOERGL, and VOLKER MUELLER
Appeal2017-003512
Application 12/158,338
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Shutty et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 29--42, 44--47, 49, and 51. Claims
1-28, 43, and 50 have been withdrawn from consideration. Claim 48 has
been canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2017-003512
Application 12/158,338
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "controlling exhaust gas
recirculation within turbocharged compression-ignition engine systems."
Spec. i-f 2, Fig. 3. Claims 29 and 51 are independent.
Claim 29 is illustrative of the claimed subject matter and recites:
29. A product comprising:
a controller to control exhaust gas recirculation (EGR) and
configured to:
receive input signals including a target total EGR
fraction of an EGR system comprising at least two EGR
paths, which has been estimated responsive to one or more
proxy parameters as input to one or more engine system
models, and at least one other engine system input signal,
determine a target HP/LP EGR ratio to control other
engine system parameters within the constraints of the
target total EGR fraction, and
transmit output signals responsive to the target
HP/LP EGR ratio;
wherein the controller is further configured to:
generate HP EGR and LP EGR setpoints in
accordance with the determined target HP/LP EGR ratio,
determine target HP and LP EGR valve opening
percentages corresponding to the HP and LP EGR
setpoints,
adjust at least one of the setpoints or opening
percentages by processing an estimated total EGR fraction
as process variable input and the target total EGR fraction
as setpoint input, and
transmit the opening percentages as the output
signals.
2
Appeal2017-003512
Application 12/158,338
REJECTIONS 1
I. Claims 29--35, 38--42, 44, 45, and 51 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brookshire (US 7,013,879 B2, issued
Mar. 21, 2006), Li (US 6,802,302 Bl, issued Oct. 12, 2004) and in
view of additional evidence. 2
II. Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brookshire, Li, DeBiasi (US 4,922,874, issued May
8, 1990) and Kurtz (US 2004/0149272 Al, published Aug. 5, 2004)
III. Claims 46 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brookshire, Li, DeBiasi, and Akao '676 (US
6,708,676 B2, issued Mar. 23, 2004).
IV. Claim 47 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Brookshire, Li, DeBiasi, Akao, and Katashiba (US 5,359,975,
issued Nov. 1, 1994).
1 The Examiner rejects claim 45 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. See Final Office Action 4 (hereinafter "Final Act.") (mailed
Oct. 1, 2015). Appellants correctly note that "[ c ]laim 45 was amended in the
response to the office action mailed December 1, 2015, rendering this
rejection moot." Appeal Brief 9 (hereinafter "Appeal Br.") (filed Apr. 4,
2016).
2 The Examiner cites the following prior art as additional evidence: Zellmer
(US 4,501,254, issued Feb. 26, 1985); zur Loye (US 6,516,774 B2, issued
Feb. 11, 2003); Pattas (US 5,067,973, issued Nov. 26, 1991); Halimi (US
5,560,208, issued Oct. 1, 1996); Akao '528 (US 6,161,528, issued Dec. 19,
2000); Ge (US 7, 143,580 B2, issued Dec. 5, 2006); and Isobe (US 5,931, 136,
issued Aug. 3, 1999). See Final Act. 5, 7. The Examiner includes withdrawn
claim 43 in the heading of this rejection. See id. at 5. We consider this an
inadvertent typographical error.
3
Appeal2017-003512
Application 12/158,338
ANALYSIS
Rejection I
Claims 29-35, 38-42, 44, 45, and 51
Each of independent claims 29 and 51 is directed to a product
including a controller configured to "determine a target HP/LP EGR ratio 3 to
control other engine system parameters within the constraints of the target
total EGR fraction." Appeal Br. 27, 30-31, Claims App. The Examiner
looks to Brookshire for this limitation, in particular, column 6, lines 14--17.
See Final Act. 6 ("determine a target HP/LP EGR ratio (Brookshire: col 6, ln
14 - 17) to control other engine system parameters (apparent) within the
constraints of the target total EGR fraction (apparent I common sense)."). 4
Brookshire discloses that:
In this particular embodiment, fresh air/second EGR
stream mixture 26 is a high pressure loop (HPL) that is cooled to
provide EGR for mid/full load operation. First EGR stream 16
is a low pressure loop (LP) that provides uncooled EGR for
idle/low load operation. The spilt [sic] between EGR delivered
via the HPL and LP is controlled by EGR valve 20, and the split
towards the LP is increased for cold weather operation.
Brookshire 6: 10-17, Fig. 1.
3 High Pressure (HP)/Low Pressure (LP) Exhaust Gas Recirculation (EGR)
ratio. See Spec. i-f 19.
4 According to the Examiner, the Li reference is "relied on ... for one very
simple teaching; that[] it's known to target an EGR amount." Final Act 3.
We further note that the Examiner does not rely on any of the references cited
at footnote 2 above to "determine a target HP/LP EGR ratio," as recited in
claims 29 and 51. See Final Act. 6, 8; see also Answer 9 (hereinafter "Ans.")
(mailed Nov. 1, 2016); Appeal Br. 27, 30-31 Claims App.
4
Appeal2017-003512
Application 12/158,338
Under the broadest reasonable interpretation, we acknowledge that the
above cited portion of Brookshire discloses HP and LP in a "ratio"
relationship; however, the cited portion of Brookshire fails to disclose
determining a "target" HP/LP EGR ratio. See Appeal Br. 9--10, 12. Column
6, lines 14 to 17, of Brookshire merely discloses that the LP portion of the
HP/LP EGR ratio is "higher/increased" during cold weather operations. See
id. at 12 ("The Examiner [cites] col. 6, lines 14--17 of Brookshire, which
may be argued merely to introduce the idea of an HP/LP EGR ratio, but
certainly does not teach determining a target EGR ratio.") (emphasis added).
In addition, we fail to see, and the Examiner fails to adequately explain, how
the "split towards the LP" corresponds to determining a "target" HP/LP
EGR ratio. Ans. 9. Moreover, the Examiner fails to direct us to the portion
of Brookshire that "explicitly discloses controlling the engine to achieve
desired [(i.e., targeted)] ratios." Id. (emphasis added).
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 29 and its dependent claims 30-
35, 38--42, 44, 45 and independent claim 51 as unpatentable over
Brookshire, Li, and additional evidence.
Rejections II-IV
Claims 36, 37, 46, 47, and 49
The Examiner's rejections of claims 36, 37, 46, 47, and 49 are each
based on the same unsupported findings and conclusions discussed above
with respect to Brookshire. See Final Act. 8-9. The Examiner does not rely
on DeBiasi, Kurtz, Akao, or Katashiba to remedy the deficiencies of
Brookshire. Accordingly, for reasons similar to those discussed above for
5
Appeal2017-003512
Application 12/158,338
claim 29, we do not sustain the Examiner's obviousness rejections of claims
36, 37, 46, 47, and 49.
New Ground of Re} ection
Claims 29-42, 44--47, 49, and 51 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1293-94 (2012), and reaffirmed in Alice
Corporation Proprietary LTD. v. CLS Bank International, 134 S. Ct. 2347,
2355 (2014). For the first step, we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea, law of nature,
or natural phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at
1296-97). If so, we advance to the second step where "we consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application" of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The Court has
described this second step "as a search for an inventive concept-i.e., an
element or combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
ineligible concept itself." Id. (citing Mayo, 132 S. Ct. at 1294 (internal
quotation marks and alterations omitted)).
Regarding the first step in the Alice framework, independent claims
29 and 51 are each directed to a product comprising a processor configured
to collect and analyze data. Stated differently, claims 29 and 51 amount to
6
Appeal2017-003512
Application 12/158,338
no more than receiving data, analyzing data, manipulating data by
converting it to another format, and then transmitting the converted data.
See Appeal Br. 27, 30-31, Claims App. Thus, claims 29 and 51 are similar
to claims directed to the collection, organization, and manipulation of data
that our reviewing court has found to be directed to patent-ineligible abstract
ideas. For example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
13 50 (2016), the court held that claims drawn to systems and methods for
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results were directed to the abstract idea of "collecting
information, analyzing it, and displaying certain results of the collection and
analysis." Id. at 1352, 1353. Similarly, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343
(Fed. Cir. 2014), the court held that claims generally reciting "a method of
1) extracting data from hard copy documents using an automated digitizing
unit such as a scanner, 2) recognizing specific information from the
extracted data, and 3) storing that information in a memory," were drawn to
an abstract idea. Id. at 1345, 1347. We further note that no actual sensor(s)
is/are recited for receiving input signals and/or transmitting output signals.
Based on the foregoing reasons, independent claims 29 and 51 are each
directed to an abstract idea.
Having determined that independent claims 29 and 51 are directed to
an abstract idea, we must determine whether the additional elements of
independent claims 29 and 51 transform them into patent-eligible subject
matter. Regarding step two of the Alice framework, the elements of claims
29 and 51, considered both individually and as an ordered combination, do
7
Appeal2017-003512
Application 12/158,338
not transform the nature of the claim into a patent-eligible application of the
abstract idea. Each of claims 29 and 51 recite a "product" that uses "a
controller" to receive, determine, generate, adjust, and transmit data. Appeal
Br. 27, 30-31, Claims App. "[M]ere ... generic computer implementation"
of an abstract idea does not transform the abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2357. Here, the claims do not require
any specialized technology or device, but only generic computer equipment.
Appellants' Specification does not describe any new or unique computer
hardware or software, and the law is clear that simply programming a
computer to perform what would otherwise be an abstract idea is not
sufficient to impart patent eligibility. See Spec. e.g., i-f 28 ("[T]he control
subsystem 22 may include any suitable hardware, software, and/or firmware
to carry out at least some portions of the methods disclosed herein."
(emphasis added)); see also id. at i-f 31; Alice Corp. Pty. v. CLS Bank Int 'l,
134 S. Ct. at 2359. In Electric Power Group, the court held that claim
elements that require no more than conventional computer, network, and
display technology are insufficient to constitute "an inventive concept in the
application of an abstract idea." Elec. Pwr. Grp., 830 F.3d at 1355. Claims
29 and 51 do not require anything other than conventional off-the-shelf
computer, network, and display technology. As noted above, the
Specification makes clear that the invention may be implemented on readily
available technology. See Spec. e.g., i-fi-128, 31.
Independent claims 29 and 51 when considered "both individually and
'as an ordered combination,"' amount to nothing more than an attempt to
patent the abstract ideas embodied in the steps of these claims. See Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the
8
Appeal2017-003512
Application 12/158,338
limitations of independent claims 29 and 51 fail to transform the nature of
these claims into patent-eligible subject matter. See id. (citing Mayo, 132 S.
Ct. at 1297, 1298). The dependent claims (i) further limit engine system or
sensed parameters, input/output values, or calculation of the estimated total
EGR fraction (i.e., claims 30, 31, 44--47, 49); (ii) specify reasons to
determine the target HP/LP EGR ratio (i.e., claims 32--40, 42); or (iii)
require a certain type of valve control or control modules (i.e., claim 41, 45).
Therefore, the dependent claims do not transform the subject matter of
independent claim 29 for similar reasons, and thus, are not directed to
patent-eligible subject matter as well.
DECISION
We REVERSE the decision of the Examiner to reject claims 29--42,
44--47, 49, and 51.
We enter a NEW GROUND OF REJECTION of claims 29--42, 44--
47, 49, and 51under35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer. The new ground of rejection is binding upon the
9
Appeal2017-003512
Application 12/158,338
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
10