Ex Parte Steuernagel et al

Patent Trial and Appeal Board

Aug 16, 2017

12998009 (P.T.A.B. Aug. 16, 2017)

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.
12/998,009 05/23/2011 Frank Steuernagel 10191/6844 9617
24972 7590 08/18/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
THIEDE, PAUL WILLIAM
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK STEUERNAGEL, PETER KHATCHIKIAN,
SASHA DRESCHMANN, BOYKE RICHTER,
MANFRED HELLMANN, and RENE SCHENK
Appeal 2016-002012
Application 12/998,009
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16, 19—28, 30, and 31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a hybrid drive system. Claim 16,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
16. A hybrid drive system for a motor vehicle, comprising:
Appeal 2016-002012
Application 12/998,009
at least one internal combustion engine configured to drive
at least one wheel of the vehicle;
at least one electric motor configured to drive at least one
wheel of the motor vehicle;
a first multispeed transmission configured to couple the at
least one internal combustion engine to the at least one wheel to
be driven by the at least one internal combustion engine; and
a second multispeed transmission configured to couple the
at least one electric motor to the at least one wheel to be driven
by the at least one electric motor, wherein the at least one internal
combustion engine and the at least one electric motor are coupled
to the at least one wheel on different axles, wherein at least one
of the first and second multispeed transmissions is configured as
a multistage transmission,
wherein at least one of:
(i) when the internal combustion engine is at a
standstill, the internal combustion engine is started before a
shifting operation of the second multispeed transmission; and
(ii) when the internal combustion engine is running,
shut-off of the internal combustion engine is delayed until a
shifting operation of the second multispeed transmission is
performed.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boll US 5,327,992 July 12, 1994
Knoblauch1 DE 102006046419A1 May 8, 2008
1 The Examiner states that Knoblauch (US 2009/0211824 A1, pub.
Aug. 27, 2009) is an English translation of Knoblauch and the Examiner
refers to the paragraph numbering of the U.S. publication. See Final Act. 3.
Appellants do not contest this point. For consistency, the decision refers to
the paragraph numbering of the U.S. publication of Knoblauch.
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Application 12/998,009
REJECTIONS
(I) Claim 16 is rejected under 35 U.S.C. § 102(b) as anticipated by
Knoblauch.
(II) Claims 19—28, 30, and 31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Knoblauch in view of Boll.
OPINION
Rejection (I)
The Examiner finds that the requirements of both (i) and (ii) of claim
16 are met by Knoblauch’s disclosure of “decoupling of the drive unit
(electric machine) so that shifting of the transmission 46 is controlled.”
Final Act. 4—5, (citing Knoblauch, paras. 29, 36, and 41).
Appellants argue that the portions of Knoblauch relied upon by the
Examiner do not disclose either limitation and emphasize that Knoblauch
does not disclose “when the internal combustion engine is running, shut-off
of the internal combustion engine is delayed until a shifting operation of the
second multispeed transmission is performed.^ Appeal Br. 4.
The Examiner responds that recitations (i) and (ii) are functional
“recitations with respect to the manner in which the claimed apparatus is
intended to be employed that do not differentiate the claimed apparatus from
the prior art apparatus because the prior art apparatus teaches all the
structural limitations of the claim.” Ans. 3^4 (citing MPEP 2114 II). The
Examiner states that, moreover, the functional recitations are met because
the power in Knoblauch is either from an electric axle drive unit only, or is
from a combination of an internal combustion engine and an electric axle
drive unit. See Ans. 5. The Examiner finds that recitation (i) “would be met
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Application 12/998,009
because the internal combustion engine would need to be started ... to move
the vehicle ... from a standstill and the shifting operation of the second
multispeed transmission subsequently occurs ... so that the electric axle
drive unit is then enabled to provide the additional power.” Ans. 6. The
Examiner finds that recitation (ii) would be met as the vehicle is operating
under power of both the internal combustion engine and the electric axle
unit, “and then applying a shifting operation to the second multispeed
transmission to disengage the electric axle drive unit ... and then shutting off
the vehicle ... once the vehicle comes to a standstill, or stop.” Id.
Appellants reiterate that the portions of Knoblauch relied upon by the
Examiner do not disclose the recited shifting operations of the second
multispeed transmission. See Reply Br. 1—3.
Although we appreciate that claim 16 does not recite a specific
structure to perform recitations (i) and (ii), nonetheless, a functional
limitation must be evaluated and considered, just like any other limitation of
the claim, and, if the prior art structure is capable of performing the intended
use, then it meets the claim. That is, the Examiner needs to establish that the
structure of Knoblauch is capable of performing either recitation (i) or (ii).
Here, Knoblauch discloses that “the vehicle may be driven solely by means
of the electric axle drive unit (for example during parking processes or when
starting).” Knoblauch, para. 36. Knoblauch also discloses that “the drive
power of the conventional engine on the one axle may be added to the drive
power of the axle drive unit according to the invention ‘through the road.’”
Thus, for starting, i.e., recitation (i), Knoblauch discloses using only the
electric axle drive unit, and discloses that when both the conventional engine
and electrical axle drive are used, the conventional engine drive power is
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Application 12/998,009
added to the drive power of the electric drive unit. The Examiner’s assertion
that “the internal combustion engine would need to be started so that the
vehicle is powered so as to begin to move the vehicle along the road from a
standstill” (Ans. 6), is contrary to the disclosure of Knoblauch that “the
vehicle may be driven solely by means of the electric axle drive unit...
when starting.” Knoblauch, para. 36. The Examiner does not point to any
portion of Knoblauch that suggests that the engine is started first and then
electrical power is added. Nor does the Examiner provide an adequate
technical reason for doing so. For these reasons, the Examiner has not
established by a preponderance of the evidence that the system of Knoblauch
is capable of starting the internal combustion engine before a shifting
operation of the second multispeed transmission, as required by claim 16,
recitation (i).
As for recitation (ii) of claim 16, we agree with Appellants that
Knoblauch does not disclose that “shut-off of the internal combustion engine
is delayed until a shifting operation of the second multispeed transmission is
performed.” Appeal Br. 4. Knoblauch discloses that “the shift device has a
neutral position in which the transmission device is decoupled from the
electric machine. This provides a safety measure in the event of a failure of
the power electronics.” Knoblauch, paras. 28—29. However, this disclosure,
by itself, is insufficient to establish that the internal combustion engine is
running and then is stopped subsequent to the electric machine being
decoupled. Moreover, consistent with Appellants’ Specification, the term
“delayed” requires more than just vehicle engine shut off “at a later time”
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than disengagement of the second transmission.2 Ans. 6. Appellants’
Specification discloses:
If internal combustion engine 7 has received a disconnect signal,
then it is also possible to provide through control 20 that initially
there is a downshifting (advanced, if necessary) of second
transmission 19 and only then is internal combustion engine 7
shut off. Turning off internal combustion engine 7 is thus
delayed.
Spec., 18,11. 16—21. The Examiner does not point to any portion of
Knoblauch that suggests that anything hinders Knoblauch’s engine from
being stopped. The Examiner’s scenario for recitation (ii) is for a normal
shutting off of the vehicle once the vehicle comes to a standstill, or stop.
Hence, the Examiner has not established by a preponderance of the evidence
that when the internal combustion engine of Knoblauch is running, shut-off
of the internal combustion engine is delayed until a shifting operation of the
second multispeed transmission is performed. Accordingly, we reverse the
Examiner’s rejection under 35 U.S.C. § 103(a) of claim 16 as anticipated by
Knoblauch.
Rejection (II)
Claims 19—28, 30, and 31 depend from claim 16. Appeal Br. (Claims
App. 1—4). The Examiner does not rely on the disclosure of Boll in any
manner that would remedy the deficiencies of claim 16 based on Knoblauch
in Rejection (I). For the same reasons stated above in connection with
Rejection (I), we reverse the rejection of claims 19—28, 30, and 31.
2 A common dictionary definition of the term “delay” is “the act of
postponing, hindering, or causing something to occur more slowly than
normal.” Merriam-Webster Collegiate Dictionary (11th ed. 2005).
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DECISION
The Examiner’s rejection of claims 16, 19—28, 30, and 31 is reversed.
REVERSED
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