Ford Global Technologies, LLC

Patent Trials and Appeals Board

Nov 19, 2020

2019003553 (P.T.A.B. Nov. 19, 2020)

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.
13/900,421 05/22/2013 Chris Paul Glugla 83362747 7746
36865 7590 11/19/2020
MCCOY RUSSELL LLP
1410 NW JOHNSON STREET, SUITE 201
PORTLAND, OR 97209
EXAMINER
CAMPBELL, JOSHUA A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRIS PAUL GLUGLA
__________

Appeal 2019-0035531
Application 13/900,4212
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from Examiner’s final
rejection of claims 1–3 and 10–15, which are all the pending claims before
us for review. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was
held on November 6, 2020.
We REVERSE.

1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 26, 2018) and Reply Brief (“Reply Br.,” filed Apr. 3, 2019), the
Examiner’s Answer (“Ans.,” mailed Feb. 5, 2019) and Final Office Action
(“Final Act.,” mailed June 26, 2018).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies “Ford Global Technologies, LLC” as the real
party in interest. Appeal Br. 3.
Appeal 2019-003553
Application 13/900,421
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellant’s claimed invention relates to “methods for controlling
knock in a variable displacement engine (VDE).” Spec. 1:4–5. Independent
claims 1 and 10, reproduced below, are representative of the subject matter
on appeal.
1. A method, comprising:
receiving a first knock indication for a selected cylinder;
operating in partial cylinder mode, determining partial
cylinder operation is occurring, and receiving the first knock
indication, and, responsive to the first knock indication being
received and the determining partial cylinder operation is
occurring, adjusting only a selected cylinder's ignition timing
and maintaining ignition timing of remaining active cylinders;
and
operating in a full cylinder mode, determining full
cylinder operation is occurring, and receiving the first knock
indication, and, responsive to the first knock indication being
received and the determining full cylinder operation is
occurring, adjusting multiple cylinders’ ignition timing.

10. A method comprising:
operating in a first mode with less active cylinders where
a number of cylinders are deactivated, determining that
operation in the first mode with less active cylinders is
occurring, receiving a first knock indication comprising a knock
sensor output exceeding a first threshold during the operation in
Appeal 2019-003553
Application 13/900,421
3
the first mode with less active cylinders, and receiving a second
knock indication comprising the knock sensor output exceeding
the first threshold during the operation in the first mode with
less active cylinders, and:
responsive to receiving the first knock indication
and responsive to determining that operation in the first
mode with less active cylinders is occurring, adjusting
ignition timing of only a subset of active cylinders, the
subset of active cylinders being fewer than a number of
active cylinders; and
responsive to receiving the second knock
indication and responsive to determining that operation m
the first mode with less active cylinders is occurring,
adjusting ignition timing of all active cylinders; and
operating in a second mode with more active cylinders,
determining that operation in the second mode with more active
cylinders is occurring, and receiving a third knock indication
comprising a knock sensor output exceeding a second threshold
during the operation in the second mode with more active
cylinders, and:
responsive to receiving the third knock indication
and responsive to determining that operation in the
second mode with more active cylinders is occurring,
adjusting multiple cylinders' ignition timing, wherein the
first threshold is different from the second threshold.
Appeal Br. 45, 47–48; Claims App.
Appeal 2019-003553
Application 13/900,421
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Rejections3
Claim 1 stands rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Smith et al. (US 2011/0265454 A1, pub. Nov. 3, 2011)
(“Smith”). Ans. 3–4.
Claims 2, 10–12, 14, and 15 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Smith as evidenced by Ueda (JP
01147159A, pub. June 8, 1989).
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Smith and Iida (US 4,483,295, iss. Nov. 20, 1984) as evidenced by
Ueda.
Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over
Smith and Asano (JP 10169537A, pub. June 23, 1998) as evidenced by
Ueda.
OPINION
Anticipation
Claim 1
Independent claim 1 recites, inter alia, “receiving a first knock
indication for a selected cylinder” and calls for the performance of two
action steps based on specified conditions: (1) “responsive to the first knock
indication being received and the determining partial cylinder operation is
occurring, adjusting only a selected cylinder’s ignition timing and
maintaining ignition timing of remaining active cylinders; and” (2)
“responsive to the first knock indication being received and determining full

3 The Examiner maintains the rejections of claims 1–3 and 10–15 (Ans. 3–
11) and withdraws the rejections of claims 4–9 and 16–21 (id. at 11).
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Application 13/900,421
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cylinder operation is occurring, adjusting multiple cylinders’ ignition
timing.” Appeal Br. 45, Claims App.
In rejecting claim 1 as being anticipated by Smith, the Examiner finds
Smith’s Figure 8 embodiment discloses the recited process steps. Final Act.
4–5 (citing Smith, Fig. 8); see also Ans. 3–4.
Appellant argues that “[c]laim 1 is not properly rejected under 35
U.S.C. § 102(a)(1) as being anticipated by Smith.” Appeal Br. 8 (emphasis
omitted). According to Appellant: “FIG. 8 of Smith generalizes the knock
mitigating actions to be two different possible actions (retarding spark
timing in the affected cylinder or group of cylinders) in response to knock,
whether VDE or non-VDE mode is occurring.” Id. at 17. In particular,
Appellant argues that “there is insufficient evidence that the disclosure in
Smith requires adjusting only a selected cylinder’s ignition timing and
maintaining ignition timing of remaining active cylinders responsive to the
first knock indication being received during VDE mode, but rather Smith
leaves open the possibility that multiple cylinders’ ignition timing is
adjusted in response to these conditions, during VDE mode (id. at 15).”
Appellant asserts that “claim 1 requires that responsive to the first knock
indication being received and determining full cylinder operation is
occurring, adjusting multiple cylinders’ ignition timing. The disclosure in
Smith does not guarantee that this will occur every time the recited
conditions are present (receiving the knock indication and determining full
cylinder operation is occurring).” Id. at 18.
Responding to Appellant’s argument, the Examiner states: “However,
the fact that Smith’s algorithm is configured to perform a method different
from the claimed method under some engine operating conditions does not
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Application 13/900,421
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invalidate anticipation under those conditions in which the algorithm
performs the claimed method.” Ans. 12. According to the Examiner:
The algorithm of Figure 8 is repeatedly performed [Smith,
0106] and is thus configured to operate and then determine that
the engine is operating in a non-VDE or full cylinder mode in
step 802. The algorithm may then again receive the first knock
indication in steps 810, 812, and responsive to the first knock
indication being received and the determining full cylinder
operation is occurring, adjust multiple cylinders’ ignition
timing in step 814.
Id. We are persuaded of error.
“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed
subject matter is identically disclosed or described in the prior art.” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis and internal quotation
marks omitted). “Thus, it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[T]he [prior art] reference must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.”
Arkley, 455 F.2d at 587.
We find the Examiner fails to demonstrate that Smith discloses, in a
single embodiment associated with Figure 8, the steps of the process set
forth in claim 1. The difficulty with the Examiner’s anticipation rejection is
that Smith’s embodiment shown in Figure 8 fails to account for the claimed
actions being performed based on the specified conditions. In response to
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Application 13/900,421
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Appellant’s argument supra, the Examiner acknowledges that “Smith’s
algorithm is configured to perform a method different from the claimed
method under some engine operating conditions” (Ans. 12), and the
Examiner relies on distinct teachings in paragraph 106 of Smith to
supplement those deficient findings. The Examiner reasons that “[t]he
algorithm may then again receive the first knock indication in steps 810,
812, and responsive to the first knock indication being received and the
determining full cylinder operation is occurring, adjust multiple cylinders’
ignition timing in step 814.” Id. In doing so, the Examiner is picking and
combining various disclosures in Smith and providing a rationale as to why
Smith teaches the claimed invention. “Such picking and choosing may be
entirely proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with objective evidence
any inference of obviousness which may arise from the similarity of the
subject matter which he claims to the prior art, but it has no place in the
making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587–88.
Because the Examiner has failed to establish a prima facie case of
anticipation, we do not sustain the rejection of claim 1 as being anticipated
by Smith.
Claims 2, 10–12, 14, and 15
The Examiner’s anticipation rejection of claim 10 also suffers for the
same reasons. See Final Act. 5–7. Accordingly, we do not sustain the
rejection of independent claim 10 and dependent claims 2, 11, 12, 14, and 15
as being anticipated by Smith.

Appeal 2019-003553
Application 13/900,421
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Obviousness
Claims 3 and 13
We also do not sustain the rejection of claims 3 and 13, which depend
from independent claim 1 and 10 respectively, for the same reasons because
the Examiner’s reliance on the additional cited references fails to cure the
deficiency of the base claims.
CONCLUSION
The Examiner’s decision to reject claims 1–3 and 10–15 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1 102(a)(1) Smith 1
2, 10–12, 14,
15
102(a)(1) Smith, Ueda 2, 10–12, 14,
15
3 103 Smith, Iida,
Ueda
3
13 103 Smith,
Asano, Ueda
13
Overall Outcome 1–3, 10–15

REVERSED