Ex Parte Teran, Jr. et al

Board of Patent Appeals and Interferences

May 10, 2012

10604661 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERTO TERAN, JR., KIANA DANIELLE WHITEHEAD,
THOMAS JOSEPH STOLTZ, PAUL MICHAEL DENISTON, and
PAUL SZUSZMAN

________________

Appeal 2009-015177
Application 10/604,661
Technology Center 2800
________________

Before ROBERT E. NAPPI, DENISE M. POTHIER, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015177
Application 10/604,661

2
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 3, 5, 7, 8, and 10 – 13. Claims 4, 6, 9, and 14 – 22 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to a system and method of controlling shutdown
of a vehicles that use drive-by-wire and electronic throttle control systems
(Spec. ¶ [0001]). With this system and method, a controller that has multiple
functions temporarily maintains operation of the controller functions when
an ignition-enabling device is switched to an OFF state (Abstract).
Exemplary Claims
1. A vehicle shutdown system for a non-hybrid vehicle having
an internal combustion engine comprising:
an ignition-enabling device having at least on [sic] ON
state and an OFF state, said ignition-enabling device enabling
ignition of the internal combustion engine;
a switch coupled to said ignition-enabling device and a
fuel supply system; and
a non-hybrid internal combustion engine controller
having a plurality of functions and being coupled to said
ignition-enabling device, said engine controller at least
temporarily maintaining operation of at least a portion of said
controller functions when said ignition-enabling device is
switched to said OFF state, said controller functions
comprising non-idle air valve related functions, said engine
controller also disabling said fuel supply system upon said
ignition-enabling device being switched to said OFF state.
(Emphasis added).
Appeal 2009-015177
Application 10/604,661

3
Evidence and Rejections
The Examiner rejects claim 1 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention
(Ans. 4).
The Examiner rejects claims 1 – 3, 10, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Slopsema (US 2002/0179031 A1) and
Malik (US 4,364,343) (Ans. 5 – 7).
1

ISSUES
1. Did the Examiner err in finding that claim 1’s recitation of
“non-idle air valve related functions” is indefinite when read in light of the
Specification?
2. Did the Examiner err in finding that Slopsema teaches or suggests
“said engine controller at least temporarily maintaining operation of at least
a portion of said controller functions when said ignition-enabling device is
switched to said OFF state, said controller functions comprising non-idle air
valve related functions,” as recited in claim 1?
ANALYSIS
Issue 1 — The § 112, Second Paragraph Rejection
The Examiner finds that “non-idle air valve related functions” is
indefinite because the recitation is not described in the Specification and

1
The Examiner rejects claims 5, 7, 8, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Slopsema and Malik in combination with other
references (Ans. 7 – 10). However, Appellants do not separately argue for
these claims with specificity (see App. Br. 6).
Appeal 2009-015177
Application 10/604,661

4
would not be understood by an artisan of ordinary skill (see Ans. 4). For
purposes of examination, the Examiner construes the recitation to mean “any
function other than the system[’]s normal idle air flow position” (id.).
Appellants argue that the meaning of non-idle air valve related
functions “is clear from the specification, drawings and claims of this case as
originally filed” (App. Br. 5). Appellants submit that the recitation “merely
refers to functions which are not concerned with control of air flowing into
the engine at idle” (id.). Also, claim 2 lists “functions” but does not limit
them to “non-idle air valve related functions” (App. Br. 5). Thus, while
Appellants provide a plausible claim construction, they fail to show error in
the Examiner’s proposed claim construction, which is also plausible.
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) (citations
omitted). A claim is indefinite if it possesses a claim recitation that is
amenable to two plausible definitions and therefore ambiguous. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Because
“non-idle air valve related functions” is amenable to at least two plausible
definitions (those provided by the Examiner and by Appellants), this
recitation is ambiguous.
Because the term “non-idle air valve related functions” is ambiguous,
we agree with the Examiner that claim 1 is indefinite and we sustain the
Examiner’s 35 U.S.C. § 112, second paragraph rejection of claim 1.
The Examiner also finds that the terms “non-hybrid” and “internal
combustion engine” are indefinite (see Ans. 4 and 11). Specifically, the
Appeal 2009-015177
Application 10/604,661

5
Examiner finds that (1) these limitations are not provided in the
Specification or the original claims (Ans. 4) and (2) the original disclosure
lacks enablement for an invention limited by these terms (Ans. 11).
However, “definiteness and enablement are analytically distinct
requirements.” Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350,
1358 n.2 (Fed. Cir. 2002). For example, if the Specification does not enable
the “internal-combustion engine” recitation, then a rejection must be made
under the first paragraph, not the second paragraph, of 35 U.S.C. § 112. No
such rejection is before us. Thus, our affirmance of the Examiner’s rejection
of claim 1 under 35 U.S.C. § 112, second paragraph is based solely on the
indefiniteness of the “non-idle air valve related functions” recitation.
Issue 2 — The 35 U.S.C. § 103(a) Rejections
Claim 1 recites “said engine controller at least temporarily
maintaining operation of at least a portion of said controller functions when
said ignition-enabling device is switched to said OFF state, said controller
functions comprising non-idle air valve related functions” (emphasis added).
The Examiner finds that Slopsema’s engine controller teaches or suggests
these recitations (see Ans. 5). Appellants argue that “Slopsema is not
controlling a non-idle air valve related function . . . . [B]ecause there is only
one throttle in Slopsema’s system, it must, by definition, be an idle air
control throttle, and Slopsema is therefore working with an idle air valve
related function” (App. Br. 5 – 6) (emphasis in the original).
Appellants’ arguments are not convincing. First, Slopsema teaches a
controller function that adjusts the throttle, when the vehicle is at shutdown
and not at idle, to substantially reduce airflow (see Ans. 5 (citing Slopsema
Fig. 2 and ¶¶ [0015] – [0017]); see also Ans. 12). Second, Slopsema
Appeal 2009-015177
Application 10/604,661

6
specifically teaches that during shutdown “the throttle is adjusted . . . most
preferably [for] less than about 10 percent of the idle speed flow rate”
(Slopsema ¶ [0016]). That is, when making this adjustment, Slopsema does
not adjust the throttle to a proper idle speed flow rate, but instead adjusts the
flow rate to be a fraction of this idle speed flow rate. Thus, Slopsema’s
controller comprises at least one non-idle air valve related function (i.e.,
adjusting the throttle to a position other than the normal idle air flow
position).
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as the rejections of claims 2 – 3, 5, 7, 8, and 10 – 13, which are not argued
separately (see App. Br. 6).
DECISION
We affirm the Examiner’s decision to reject claims 1 – 3, 5, 7, 8, and
10 – 13.
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).

AFFIRMED

ELD