Ex Parte Zhao et al

Patent Trial and Appeal Board

Jan 24, 2018

14133726 (P.T.A.B. Jan. 24, 2018)

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.
14/133,726 12/19/2013 Y anan Zhao 83362168 1925
28395 7590 01/26/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER SHUDY, ANGELINA M
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANAN ZHAO, MATHEW ALAN BOESCH, and
SANGEETHA SANGAMESWARAN
(Applicant: Ford Global Technologies, LLC)
Appeal 2017-003980
Application 14/133,7261
Technology Center 3600
Before THU A. DANG, MICHAEL J. STRAUSS, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed October 25, 2017 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of claims 1—6 and 9—
18 under 35 U.S.C. § 103(a) as being unpatentable over Kuroda et al. (US
6,564,765 B2; issued May 20, 2003) (“Kuroda”) and Herbolzheimer (US
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 3.
Appeal 2017-003980
Application 14/133,726
2012/0089317 Al; published Apr. 12, 2012); claims 7 and 19 under 35
U.S.C. § 103(a) as being unpatentable over Kuroda, Herbolzheimer, and Yee
et al. (US 2011/0246013 Al; published Oct. 6, 2011) (“Yee”); and claims 8
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Kuroda,
Herbolzheimer, and Nitz et al. (US 2012/0191330 Al; published July 26,
2012) (“Nitz”).
In the Request for Rehearing, Appellants contend the Decision is
impermissibly based on hindsight. Request 2. According to Appellants,
Herbolzheimer teaches “inhibit[ing] engine stop during vehicle stop if the
predicted stop duration is too short (i.e., less than a minimum engine stop
time)” and Kuroda teaches “restart[ing] an engine responsive to the stop
duration being too long (i.e., greater than a target time) to avoid over
discharge of the battery.” Id. Appellants argue, therefore:
[T]he concerns of Kuroda (over discharging the battery) have
nothing to do with the concerns of Herbolzheimer (avoiding stop
durations that are too short). Why would one of ordinary skill
have been inspired to combine the teachings of references with
diametrically opposed objectives? The Board suggests that
because Herbolzheimer considers certain vehicle parameters and
Kuroda considers certain vehicle parameters, the references
collectively suggest the claimed invention. Decision on Appeal,
p. 4. This rationale, however, appears to be impermissibly
informed by hindsight: Preventing an auto stop has nothing to do
with restarting an engine. Put a different way, absent the
teachings of the Applicant, one of ordinary skill would not have
been able to link the references together in the manner proposed
by the Board.
Request 2.
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request for Rehearing, and we find no errors therein. We decline to
change our prior Decision for the reasons discussed infra.
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Appeal 2017-003980
Application 14/133,726
A request for rehearing is limited to points that Appellants believe
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1). We have reviewed Appellants’ Request for Rehearing, but
find no arguments or evidence identifying an issue which we either
misapprehended or overlooked. Instead, Appellants contend our Decision is
based on improper hindsight. We interpret Appellants’ contention as
arguing that the combination of Kuroda and Herbolzheimer is improper. We
find Appellants’ arguments constitute new arguments that were not
previously raised in Appellants’ Appeal Brief or in the Reply Brief. Except
in certain situations not applicable here, arguments not raised, and evidence
not relied upon previously, are not permitted in the request for rehearing. 37
C.F.R. § 41.52(a)(1); see also Cooper v. Goldfarb, 154 F.3d 1321, 1331
(Fed. Cir. 1998) (“A party cannot wait until after the Board has rendered an
adverse decision and then present new arguments in a request for
reconsideration.”). Appellants do not show good cause as to why the
arguments were not presented in the Briefs, and, thus, they are waived. 37
C.F.R. § 41.52; Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI2010)
(informative). Moreover, arguments not made are deemed waived. See id.
Cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an [Ajppellant, looking for nonobvious distinctions over the prior
art.”).
To the extent Appellants’ arguments can be considered as an assertion
that our findings in the Decision constitutes a new ground of rejection, we
disagree. Whether there is a new ground of rejection depends upon whether
the basic thrust of a rejection has remained the same. See In re Kronig, 539
F.2d 1300, 1302 (CCPA 1976) (“[T]he ultimate criterion of whether a
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Appeal 2017-003980
Application 14/133,726
rejection is considered ‘new’ in a decision by the board is whether appellants
have had fair opportunity to react to the thrust of the rejection.”). Not all
new Board findings warrant a new ground of rejection for it is “long
acknowledged the right of the Board to make additional findings of fact
based upon the Board’s own knowledge and experience to fill in the gaps
that might exist in the examiner’s evidentiary showing.” See In re
Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In reLeithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011)). Further explaining and elaborating upon
a rejection, and thoroughness in responding to an applicant's arguments, are
not considered a new ground of rejection. See In re Jung, 637 F.3d 1356,
1364—65 (2011). However, the reasoning goes “beyond filling in gaps in the
examiner’s reasoning” when “it is not clear that the examiner’s reasoning
survived in the Board’s rejection.” Biedermann, 733 F.3d at 338.
We have reviewed analysis contained in the Decision and do not find
that the analysis changes the thrust of the Examiner’s rejections. See
Ans. 2—10. Instead, we believe the analysis merely more clearly explains the
basis for the Examiner’s rejections and that the Examiner’s articulated
reasoning and factual underpinnings are sufficient to sustain the rejections.
See Final Act. 8—25; Ans. 2—10.
DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellants’ request with respect to making any change thereto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING DENIED
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