Ford Global Technologies, LLC

Patent Trials and Appeals Board

Jul 7, 2020

15222311 - (D) (P.T.A.B. Jul. 7, 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.
15/222,311 07/28/2016 Md Shahnoor Amin 83679540; 67186-271PUS1 7258
46442 7590 07/07/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
MCGRATH, ERIN E
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MD SHAHNOOR AMIN,
ROBERT DAVID HANCASKY,
ERIK DONDZILA, and
TED HALADYNA
___________________

Appeal 2019-006799
Application 15/222,311
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 15/222,311

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 21–28. Final Act. 2–15. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
The claims are directed to a method for preheating engine fluid in an
electrified vehicle when the vehicle is in fluid maintenance mode.
Spec. ¶¶ 1–3. The vehicle exits fluid maintenance mode after meeting or
exceeding a threshold temperature for a set time. Spec. ¶ 4. The controller
determines if the vehicle should operate in fluid maintenance mode or fluid
nonmaintenance mode, and causes the electrified vehicle to do so.
Spec. ¶¶ 50–51. Claims 1 and 24 are independent. Claim 1 is reproduced
below.
1. A fluid heating method, comprising:
operating an engine of a vehicle to heat an engine fluid
during a drive cycle if the vehicle is in a fluid maintenance
mode, and not operating the engine of the vehicle to heat the
engine fluid during a drive cycle if the vehicle is in a fluid
nonmaintenance mode; and
heating the engine fluid prior to the drive cycle if the
vehicle is in the fluid maintenance mode and the vehicle is
electrically coupled to a grid power source.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Ford
Global Technologies, LLC. Appeal Br. 1. Ultimately, Ford Global
Technologies, LLC is owned by Ford Motor Company. Id.
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REJECTIONS
I. Claims 21 and 24–28 are rejected under 35 U.S.C. § 112(b) as
indefinite for failure to particularly point out and distinctly claim the subject
matter Appellant regards as the invention.2 Final Act. 3–4.
II. Claim 8 is rejected under 35 U.S.C. § 112(a) for failure to
comply with the written description requirement. Final Act. 3.
III. Claims 1, 3, 6, 9, 21, 24, and 28 are rejected under 35 U.S.C.
§ 103 as unpatentable over Hawkins and Ulrey.3 Final Act. 4–7.
IV. Claims 1, 2, 5, 7, 9, 22, and 24–27 are rejected under 35 U.S.C.
§ 103 as unpatentable over Stein, Edlund, and Ulrey.4 Final Act. 7–10.
V. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Hawkins, Ulrey, and Edlund. Final Act. 10.
VI. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Hawkins, Ulrey, and Thomas.5 Final Act. 11.
VII. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Hawkins, Ulrey, and Luther.6 Final Act. 11–12.

2 The Examiner also rejected independent claims 1–11, 22, and 23 under 35
U.S.C. § 112(b) in the Final Office Action. Final Act. 3–4. The Examiner
withdrew the rejection of independent claim 1 in the Answer, and thereby
withdrew the rejection of claims 2–11, 22, and 23, which were rejected due
to their dependency from claim 1. Ans. 4.
3 Hawkins (US 2013/0152892 A1, published June 20, 2013); Ulrey (US
2011/0172890 A1, published July 14, 2011).
4 Stein (US 4,245,593, issued Jan. 20, 1981); Edlund (US 3,870,855, issued
Mar. 11, 1975).
5 Thomas (US 2011/0155714 A1, published June 30, 2011).
6 Luther (US 2004/0211386 A1, published Oct. 28, 2004).
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VIII. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Hawkins, Ulrey, Quix, and Pingen.7 Final Act. 12.
IX. Claims 23 and 27 are rejected under 35 U.S.C. § 103 as
unpatentable over Stein, Ulrey, and Ringlund.8 Final Act. 13.

ANALYSIS
Indefiniteness
The Examiner determined that the phrase “the non-fluid maintenance
mode,” as recited in claim 21, and the phrase “the fluid nonmaintenance
mode,” as recited in claim 24, are indefinite for lacking antecedent basis.
Final Act. 4. Appellant contends that the Examiner should have entered
proposed amendments addressing the rejections, and proposes to resubmit
the amendments if prosecution is re-opened. Appeal Br. 5. Because
Appellant has not contested the rejection on the merits,9 we sustain the
rejection of claims 21 and 24 under 35 U.S.C. § 112(b) as indefinite for
failure to particularly point out and distinctly claim the subject matter
Appellant regards as the invention. See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential); 37 C.F.R. § 41.37(c)(1)(iv) (We review
the appealed rejections for error identified by Appellant, and arguments not
made are waived.).

7 Quix (US 2012/0234286 A1, published Sept. 20, 2012); Pingen
(US 2012/0285413 A1, published Nov. 15, 2012).
8 Ringlund (US 1,269,310, issued June 11, 1918).
9 Appellant’s argument that the Examiner should have entered the proposed
amendments is a petitionable, not appealable, matter. In re Mindick, 371
F.2d 892, 894 (CCPA 1967).
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Written Description
The Examiner determined that the phrase “entering the fluid
maintenance mode in response to the vehicle operating during a drive cycle
without the engine operating,” as recited in claim 8, is not described in the
Specification. Final Act. 3. Appellant, once again, contends that the
Examiner should have entered proposed amendments addressing the
rejection; and proposes to resubmit the amendments if prosecution is re-
opened. Appeal Br. 3. Because Appellant has not contested the rejection on
the merits, we sustain the rejection of claim 8 under 35 U.S.C. § 112(a) for
failure to comply with the written description requirement.

Obviousness
Claims 1, 3, 6, 9, 21, 24, and 28 over Hawkins and Ulrey
The dispositive issue in this rejection relates to the relationship
between engine operation and the fluid maintenance and nonmaintenance
modes. Specifically, independent claim 1 recites a method including the
step of “operating an engine of a vehicle to heat an engine fluid during a
drive cycle if the vehicle is in a fluid maintenance mode, and not operating
the engine of the vehicle to heat the engine fluid during a drive cycle if the
vehicle is in a fluid nonmaintenance mode.” Similarly, independent claim
24 recites a method including the step, performed “during the drive cycle,”
of “selectively operating an engine to heat the engine fluid depending on
whether the vehicle is in the fluid maintenance mode or the fluid
nonmaintenance mode.”
The Examiner interprets that “not operating the engine of the vehicle
to heat the engine fluid” as recited in claim 1 simply requires not heating the
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fluid to reach a target temperature, and does not require that the engine is
turned off entirely. Ans. 5. According to the Examiner, this is true because
claim 1 does not require a causal relationship between engine operation and
the fluid maintenance mode. See Ans. 6 (stating that engine operation and
fluid maintenance or nonmaintenance mode do “not necessarily require a
causal relationship”). The Examiner provides a similar explanation for
claim 24. Ans. 7.
Appellant argues, and we agree, that claims 1 and 24 require a causal
relationship between the fluid maintenance/nonmaintenance modes and
engine operation. See Reply Br. 3 (arguing that “the operation of the engine
to heat the engine fluid depends on the mode”). Claim 1 recites that the
engine is operated to heat an engine fluid “if” the vehicle is in fluid
maintenance mode and not operated to heat the engine fluid “if” in fluid
nonmaintenance mode. Similarly, claim 24 calls for heating the engine fluid
“when” in fluid maintenance mode and calls for operating an engine to heat
engine fluid “depending on” whether the vehicles is in fluid maintenance or
nonmaintenance mode. This language suggests that the claimed fluid
maintenance/nonmaintenance modes control whether or not the engine is
operated with the aim of heating an engine fluid. Specifically, a fluid
maintentance mode causes the engine to operate to heat an engine fluid, and
a fluid nonmaintenance mode causes the engine to not operate for that
purpose. See Reply Br. 3 (emphasizing at least the claim term ‘if’ provide[s]
[the] causal link [that] the Examiner alleges is missing.”).
The Specification is consistent with this interpretation. See In re
American Acad. Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claim
interpretation must be consistent with the Specification). According to the
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Specification: “In the fluid maintenance mode, the internal combustion
engine is forced to operate until an engine fluid reached a threshold
temperature. The fluid maintenance mode can force the internal combustion
engine to operate even though drive torque from the internal combustion
engine is not required.” Spec. ¶ 3. The Specification also describes that
engine 20 could be operating “because” electrified vehicle 60 is in a fluid
maintenance mode. Spec. ¶ 46. The Specification further describes that
controller 76 “causes” the vehicle to operate in fluid maintenance mode or
fluid nonmaintenance mode, and that when in fluid maintenance mode
engine 20 is operated to heat the engine fluid. Spec. ¶ 50.
Therefore, independent claims 1 and 24 require a causal relationship
between fluid maintenance/nonmaintenance modes and engine operation.
Specifically, the claims require that the fluid maintenance mode causes the
engine to operate to heat the engine fluid, and that the fluid nonmaintenance
mode causes the engine not to operate to heat the engine fluid. With this
claim interpretation in mind, we turn to the prior art.
In determining that the subject matter of independent claims 1 and 24
would have been obvious from the combined teachings of Hawkins and
Ulrey, the Examiner finds paragraphs 13 and 34 of Ulrey teach the
limitations at issue.10 Final Act. 5–6. Specifically, the Examiner finds that
Ulrey discloses operating an engine to heat engine fluid during a drive cycle
if the vehicle is in fluid maintenance mode (citing Ulrey ¶ 13), and not
operating the engine to heat the engine fluid during the drive cycle if the
vehicle is in a fluid nonmaintenance mode (citing Ulrey ¶ 34). Id.

10 Claims 3, 6, 9, and 21 depend from claim 1. Claim 28 depends from
claim 24.
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Ulrey describes a propulsion system for a motor vehicle including an
internal combustion engine. Ulrey ¶ 14, Fig. 1. Ulrey discloses that when
the engine is operating, the engine controller can route transmission fluid
through the engine cylinder walls so that waste engine heat is transferred to
the fluid. Ulrey, ¶ 13, Figs. 2–6. When the engine is off (e.g., at idle speed),
a transmission fluid pump can operate when desired to route transmission
fluid to the engine cylinder walls so that the heat supply to the passenger
cabin can be maintained. Ulrey ¶ 34; see also ¶¶ 13, 32–33 (disclosing that
Ulrey’s system can additionally or alternatively include a heater core (e.g.,
heat exchanger 304) so that transmission fluid can heat the passenger
compartment).
The Examiner does not identify any disclosure in Ulrey indicating that
engine operation is determined by the need to heat or not to heat the fluid
(fluid maintenance or nonmaintenance mode). Specifically, a person of
ordinary skill would understand that Ulrey’s system can utilize engine heat
while the engine is operating (Ulrey ¶ 13, Figs. 2–6), but there is no
indication that the engine was operating for the purpose of heating the fluid
(fluid maintenance mode). Similarly, nothing in Ulrey indicates that when
the engine is not operating it is due to the lack of a need to heat the fluid
(fluid nonmaintenace mode) (Ulrey ¶ 34, Figs. 2–6). Although Ulrey
teaches not operating the engine, the lack of operating was not done in
response to a need not to heat the fluid.
Consequently, the Examiner has not shown that the combination of
Hawkins and Ulrey would have resulted in “operating an engine of a vehicle
to heat an engine fluid during a drive cycle if the vehicle is in a fluid
maintenance mode, and not operating the engine of the vehicle to heat the
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engine fluid during a drive cycle if the vehicle is in a fluid nonmaintenance
mode,” as recited in independent claim 1, and similarly recited in
independent claim 24. See Appeal Br. 6; Reply Br. 3. We do not sustain the
rejection of claims 1, 3, 6, 9, 21, 24, and 28 under 35 U.S.C. § 103 as
unpatentable over Hawkins and Ulrey.

Claims 1, 2, 5, 7, 9, 22, and 24–27 over Stein, Edlund, and Ulrey
The Examiner concludes that the subject matter of claims 1 and 2411
would have been obvious from the combined teachings of Stein, Edlund, and
Ulrey. Final Act. 7–10. Here, as in the prior rejection, the Examiner relies
on Ulrey as disclosing the limitations at issue. See Final Act. 7.
Consequently, we agree with Appellant that this rejection suffers from the
same shortcoming as the prior rejection. See Appeal Br. 7.

The Remaining Grounds of Rejection
The Examiner rejects claim 4 under 35 U.S.C. § 103 as being
unpatentable over Hawkins, Ulrey, and Edlund; claim 8 under 35 U.S.C.
§ 103 as unpatentable over Hawkins, Ulrey, and Thomas; claim 10 under
35 U.S.C. § 103 as unpatentable over Hawkins, Ulrey, and Luther; claim 11
under 35 U.S.C. § 103 as unpatentable over Hawkins, Ulrey, Quix, and
Pingen; and claims 23 and 27 under 35 U.S.C. § 103 as unpatentable over
Stein, Ulrey, and Ringlund. Final Act. 10–13. In each of these rejections,
the Examiner relies on Ulrey as disclosing the limitations at issue. The
Examiner does not explain in sufficient detail how any of the additional

11 Claims 2, 5, 7, 9, and 22 depend from claim 1. Claims 25–27 depend
from claim 24.
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prior art references might remedy the deficiencies of Ulrey. Consequently,
we agree with Appellant that these rejections are deficient as well. See
Appeal Br. 8–9. Therefore, we do not sustain these rejections.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed
21, 24 112(b) Indefiniteness 21, 24
8 112(a) Written Description 8
1, 3, 6, 9,
21, 24, 28 103 Hawkins, Ulrey
1, 3, 6, 9,
21, 24, 28
1, 2, 5, 7, 9,
22, 24–27 103
Stein, Edlund,
Ulrey
1, 2, 5, 7, 9,
22, 24–27
4 103 Hawkins, Ulrey, Edlund 4
8 103 Hawkins, Ulrey, Thomas 8
10 103 Hawkins, Ulrey, Luther 10
11 103 Hawkins, Ulrey, Quix, Pingen 11
23, 27 103 Stein, Ulrey, and Ringlund 23, 27
Overall
Outcome 8, 21, 24
1–7, 9–11,
22, 23, 25–
28

Appeal 2019-006799
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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