FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Jan 1, 2021

2020001088 (P.T.A.B. Jan. 1, 2021)

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.
15/596,235 05/16/2017 Mark SHIELDS 83800044 6649
28395 7590 01/01/2021
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
GONZALEZ, JULIO CESAR
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SHIELDS, JOSEPHINE S. LEE,
JAGMOHAN SINGH, WILLIAM DAVID TREHARNE, and
GEORGE HART VRAMPAS
Appeal 2020-001088
Application 15/596,235
Technology Center 2800
Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s December 10, 2018 final decision to reject claims 1–20 (“Final
Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford
Global Technologies, LLC (Appeal Br. 1).
Appeal 2020-001088
Application 15/596,235

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a hybrid vehicle which includes
an isolation switch disposed between a first bus that is electrically coupled to
a starter for an engine, and a second bus that is electrically coupled to a
power converter and accessory loads (Abstract). The hybrid vehicle also
includes a controller programmed to normally keep the switch closed and, in
response to expiration of a predetermined time interval without starting the
engine, commands the switch to open for a predetermined period of time.
Claims 1 and 8, reproduced below from the Claims Appendix, are
illustrative of the claimed subject matter:
1. A hybrid vehicle comprising:
a switch disposed between a first bus electrically coupled
to a starter for an engine and a second bus electrically coupled
to a power converter; and
a controller programmed to command the switch to close,
and, in response to a voltage of the second bus exceeding a
voltage threshold after initiating an ignition cycle that begins
without starting the engine, command the switch to open for a
predetermined duration.
8. A hybrid vehicle power distribution system comprising:
a first bus electrically coupled to a starter for an engine;
a second bus electrically coupled to a power converter;
a switch disposed between the first bus and the second
bus; and
a controller programmed to command the switch open
during engine starting, and, in response to expiration of a
predetermined time without starting the engine, command the
switch open for a predetermined duration.
Appeal Br. 12–13 (Claims App.).

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Application 15/596,235

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zarei US 2003/0191576 A1 October 9, 2003
Algrain et al. US 7,400,059 B2 July 15, 2008
Acena et al. US 2009/0096285 A1 April 16, 2009
Gibson et al. US 2012/0104768 A1 May 3, 2012
Nakajima et al. US 2014/0306659 A1 October 16, 2014

REJECTIONS
1. Claims 1, 2, and 3 are rejected under 35 U.S.C. § 103 as
unpatentable over Zarei in view of Algrain.
2. Claims 4–8, 10–13, 15–17, 19, and 20 are rejected under
35 U.S.C. § 103 as unpatentable over Zarei in view of Algrain, and further in
view of Acena.
3. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable
over Zarei in view of Algrain and Acena, and further in view of Nakajima.
4. Claims 9 and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Zarei in view of Algrain and Acena, and further in view of
Gibson.
We note that additional rejections over Bhardwaj2 have been
withdrawn by the Examiner (Ans. 3–4).
OPINION
Rejection 1 – Claims 1–3 over Zarei in view of Algrain. The
Examiner finds that Zarei discloses a hybrid vehicle with a switch 42

2 US 7,761,198 B2, issued July 20, 2010.
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Application 15/596,235

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between a first bus 26 and a second bus 28, as shown in FIG. 2, and a
controller for controlling the switch (Final Act. 4, citing Zarei, FIG. 2, ¶ 26):

Zarei’s FIG. 2 is a schematic diagram of a soft hybrid electric vehicle power
supply circuit for the soft hybrid electric vehicle in accordance with an
embodiment of Zarei’s disclosure

The Examiner further finds that Zarei discloses opening switch 42
when the voltage is higher than a threshold (Final Act. 4, citing Zarei, ¶ 28).
The Examiner finds that Algrain “show[s] that the voltage threshold is
related to an ignition cycle without starting the engine” (Final Act. 4, citing
Algrain, FIG. 2, 6:1–16). The Examiner further finds that Algrain teaches
that its switches are opened, and that “[o]ne would have been motivated to
do [so] for the purpose of increasing the fuel efficiency in a hybrid vehicle”
(Final Act. 4). Therefore, according to the Examiner:
It would have been obvious before the time the invention was
filed to design the vehicle as disclosed by Zarei and to modify
the invention by controlling the voltage in relation to an
ignition cycle for the purpose of increasing the fuel efficiency
in a hybrid vehicle as disclosed by Algrain et al.
(id.).
Appellant argues that Zarei discloses that switch 42 is open during
high loading periods (including starting of the engine or acceleration) to
convert voltage from a low-voltage device to a high voltage of at least 30
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volts, and is closed during low loading periods (such as when the vehicle is
traveling at a constant speed or decelerating), when low voltage loads are
receiving power and the low voltage device maybe recharging (Appeal Br. 7,
citing Zarei ¶¶ 22, 28). Appellant further argues that Zarei’s controller
determines a high voltage mode when the load signal is greater than a
predetermined load, i.e. applies to up-conversion (Appeal Br. 7, citing Zarei
¶ 32). Therefore, according to Appellant, Zarei teaches opening the switch
in response to high load conditions, such as during engine starting or during
acceleration (Appeal Br. 7–8). Appellant contends that because claim 1
recites opening the switch after initiating an ignition cycle that begins
without starting the engine, Zarei’s system is fundamentally different from
the claimed invention (Appeal Br. 8).
In response, the Examiner states that because some of the key claim
terms/phrases are not clearly defined (e.g. “ignition cycle”, “initiating an
ignition cycle that begins without starting the engine”, “exceeding a voltage
threshold”, and “command the switch to open for a predetermined duration”)
these claims may be understood broadly enough so that they are
encompassed by Zarei’s disclosure (Ans. 4–8). The Examiner’s claim
construction is based on the well accepted principle that “the PTO must give
claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted). Appellant does not challenge the Examiner’s claim
interpretation.
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The Examiner also provides a detailed explanation of how the claim
language, as construed in the Answer, covers Zarei’s system (Ans. 8–10).
Appellant also does not challenge these findings.
It is well established that we review the appealed rejections for error
based upon the issues identified by Appellant and in light of the arguments
and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“Filing a Board appeal does not, unto itself,
entitle an appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”), cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”)).
In this instance, the Examiner has provided a detailed explanation of
how he has construed the claims and why, based on that construction, the
claims would have been obvious over the cited art. Appellant has not
demonstrated reversible error either in the claim construction or the findings
which underlie the obviousness determination. Accordingly we sustain the
rejection of claims 1–3.
Rejection 2 - Claims 4–8, 10–13, 15–17, 19, and 20 over Zarei in
view of Algrain and Acena. For claims 4–7, which depend from claim 1,
Appellant does not offer independent reasons for reversal (see, Appeal Br.
9–10). Accordingly, we sustain these rejections.
With respect to claims 8 and 15, and claims dependent thereon,
Appellant argues that none of the cited references teach or suggest a
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controller programmed to (1) in response to expiration of a predetermined
time without starting the engine, command the switch to open for a
predetermined duration (claim 8), or (2) command the switch to open for a
predetermined duration in response to initiating an ignition cycle in which
the hybrid powertrain is in a run mode without starting the engine (claim
15).
Appellant argues that Acena, relied upon by the Examiner for
teaching these limitations (Final Act. 5), teaches that the switch is opened
when the vehicle is in STOP mode, not based on the expiration of a
predetermined period of time without starting the engine, or in response to
initiating an ignition cycle in which the hybrid powertrain is in run mode
without starting the engine (Appeal Br. 9–10). Therefore, according the
Appellant, the Examiner has not demonstrated that all of the claim
limitations are taught or would have been suggested by the cited art (id.)
The Examiner responds (Ans. 13–14) that Acena teaches opening the
switch in response to the expiration of a predetermined period of time, citing
the following passage from Acena:
In state 60, the switch controller 22 opens the switching device
20 so that the supercapacitor bank 12 is disconnected from the
service battery 14. The switch controller 22 may enter into a
sleep mode. While in the sleep mode, the switch controller 22
waits for the next signal WAKE_UP. The diagram 50 moves
back to state 52 in response to the next signal WAKE_UP.

(Acena, ¶ 35). However, as argued by Appellant, this passage does not
indicate that the WAKE_UP signal is generated by a predetermined passage
of time. The passage is silent has to what triggers the WAKE_UP signal.
Nor is that omission remedied by the Examiner’s reference to FIG. 3.
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The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
In this instance, with respect to both claims 8 and 15, Appellant has
demonstrated error in the Examiner’s findings which underlie the
determination that Acena teaches the foregoing limitations of those claims.
Moreover, with respect to claim 8, while it might possible to install software
that would allow Acena’s control unit to perform the functions of the control
unit as recited in the claim, the “programmed to” language of claim 8
requires that the prior art structure be capable of performing the function
without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement
Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). There has
not been an adequately supported showing that Acena’s controller is capable
of performing the required function without further programing.
Accordingly, we reverse the rejections of claims 8 and 15, and the
claims which depend from them (claims 9–14 and 16–20).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 103 Zarei, Algrain 1–3
4–8, 10–13,
15–17, 19,
20
103 Zarei, Algrain,
Acena
4–7 8, 10–13,
15–17, 19,
20
14 103 Zarei, Algrain,
Acena, Nakajima
14
9, 18 103 Zarei, Algrain,
Acena, Gibson
9, 18
Overall
Outcome
1–7 8–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART