2020005568 (P.T.A.B. Jul. 19, 2021)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardJul 19, 2021

2020005568 (P.T.A.B. Jul. 19, 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. 16/045,798 07/26/2018 Heinrich Enslin 84054584; 67186-682 PUS1 5633 46442 7590 07/19/2021 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 EXAMINER OHMAN, TIFFANY P ART UNIT PAPER NUMBER 3663 NOTIFICATION DATE DELIVERY MODE 07/19/2021 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): 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 HEINRICH ENSLIN, LILA GHANNAM, CHARLES EVERETT BADGER II, XU WANG, and JEFFERY R. GRIMES ________________ Appeal 2020-005568 Application 16/045,798 Technology Center 3600 _________________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by HOELTER, Administrative Patent Judge Opinion Dissenting in Part filed by CAPP, Administrative Patent Judge HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated June 7, 2021, of the Decision on Appeal mailed May 5, 2021 (“Decision”). The majority affirmed the Examiner’s rejection of claims 1, 2, 9, 10, 14–16, and 19 as being indefinite under 35 U.S.C. § 112(b). See Decision 10, 11. 1 We use the word “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. 1. Appeal 2020-005568 Application 16/045,798 2 The Examiner, however, did not also reject dependent claims 3–8, 11–13, 17, 18, and 20 as being indefinite. On this point, the majority stated: because we sustain the Examiner’s rejection of claims 1, 2, 9, 10, 14–16, and 19 as indefinite, and because we do not discern additional recitations in claims 3–8, 11–13, 17, 18, and 20 that would appear to fully cure the defects inherited from whichever of claims 1, 2, 10, 14, or 19 they depend, the Examiner's assessment of claims 1-20 under 35 U.S.C. §§ 102 and 103 relative to Kozaki must involve, to some degree, speculation on the Examiner's part. Decision 10–11. Accordingly, and in view of our previous discussion of In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) and In re Steele, 305 F.2d 859 (CCPA 1962), the majority “reverse[d] the Examiner’s art rejections of these claims” (i.e., claims 3–8, 11–13, 17, 18, and 20). Decision 11. Appellant filed this request stating “the Board's Decision dated May 5, 2021 contains an undesignated new ground of rejection.” Req. Reh’g 1. This is because, as per Appellant, “[w]hile the Examiner rejected only a subset of claims under § 112(b), the Board has treated all pending claims as indefinite. This is a new ground of rejection.” Req. Reh’g 1. Appellant explains, “the Examiner did not reject claims 3–8, 11–13, 17, 18, or 20 for being indefinite. As such, the Board's Decision is a new ground of rejection.” Req. Reh’g 2. Upon consideration of Appellant’s Request, we expressly reject claims 3–8, 11–13, 17, 18, and 20 under 35 U.S.C. § 112(b) as being indefinite and designate this rejection as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). The basis for this rejection is that these claims inherit the defects addressed on pages 3–10 of the majority’s Decision from whichever of claims 1, 2, 10, 14, or 19 they depend and do not contain Appeal 2020-005568 Application 16/045,798 3 additional recitations that would fully cure these defects.2 Such designation modifies the earlier Decision in such a manner as to become, in effect, a new decision with respect to claims 3–8, 11–13, 17, 18, and 20. Accordingly, and as per 37 C.F.R. § 41.52(a)(1),3 a second request for rehearing will be permitted, but only with respect to this new ground of rejection of claims 3– 8, 11–13, 17, 18, and 20 and whether their additionally recited limitations cure this indefiniteness rejection. The above designation as a new ground of rejection does not disturb or alter the Board’s Decision other than how the majority’s decision is characterized, and what that entails (see 37 C.F.R. § 41.52(a)(1)). We alter its characterization in order to provide Appellant with a full and fair opportunity to respond to the thrust of the Decision. As above, this new designation is not to be understood as a change in the outcome of the underlying analysis expressed in the Decision, only that the Board now designates that Decision as a new ground of rejection with respect to claims 3–8, 11–13, 17, 18, and 20. Additionally, in this Request for Rehearing, Appellant states, “the Board should have addressed Appellant’s arguments pertaining to the prior art rejections of dependent claims 4 and 7. Claims 4 and 7 were not rejected by the Examiner under § 112(b).” Req. Reh’g 2. Appellant states, “[d]ependent claims 4 and 7 are definite and non-obvious.” Req. Reh’g 3. This is because, as per Appellant, “claims 4 and 7 add limitations which 2 See Decision 10 (explaining why these claims are indefinite). 3 “No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted.” Appeal 2020-005568 Application 16/045,798 4 clarify the purported issues with ‘gradually’ in claim 1 and ‘substantially equal’ in claim 2.” Req. Reh’g 4. Furthermore, “claims 4 and 7 add additional detail as to the rate of convergence” such that “the controller adjusts the displayed state of charge at a rate of ‘twice’ the discharge rate of the battery.” Req. Reh’g 4. Claims 4 and 7 each depend from claim 3, which depends from claim 2, which depends from claim 1. See Claims Appendix. Claim 2 recites that the controller is configured to adjust the displayed charge “until the displayed state of charge is substantially equal to the estimated state of charge.” Id. (emphasis added). Further, during the period in which such adjustment is carried out (i.e., when the displayed state of charge is not substantially equal to the estimated state of charge), the adjustment is based on a predetermined factor. Claim 4 depends, via claim 3, from claim 2 and specifies the predetermined factor (i.e., “twice the discharge rate of the battery”) to be used for the adjustment in the circumstance that the displayed state of charge exceeds the estimated state of charge. Id. Claim 7 also depends, via claim 3, from claim 2 and specifies the predetermined factor (i.e., “twice the charge rate”) to be used for the adjustment in the circumstance that the estimated state of charge exceeds the displayed state of charge. Id. By defining a predetermined factor for the adjustment, claims 4 and 7 may effectively resolve any uncertainty as to the scope of the “gradually” limitation inherited from claim 1. However, for the following reasons, claims 4 and 7 do not resolve uncertainty as to the scope of the “substantially equal” limitation inherited from claim 2. Appeal 2020-005568 Application 16/045,798 5 Claims 4 and 7 present an ambiguity as to whether they effectively narrow the “substantially equal” limitation inherited from claim 2. One reasonable, and likely the more reasonable, interpretation of claims 4 and 7 is that they do not affect the scope of the “substantially equal” limitation. In accordance with this first interpretation, claims 4 and 7 simply quantify the predetermined factor (“twice the discharge rate” when the battery is discharging, in claim 4, or “twice the charge rate” when the battery is charging, in claim 7) to be used during the adjustment period (i.e., as long as the displayed charge is not substantially equal to the estimated rate of charge). Another reasonable, although likely not the most reasonable, interpretation of claims 4 and 7 is that the “exceeds” language effectively narrows the “substantially equal” limitation inherited from claim 2 to “equal” for either the scenario when the battery is discharging (claim 4) or the scenario when the battery is charging (claim 7). However, even if claims 4 and 7 are construed pursuant to this second interpretation, this would not fully resolve the uncertainty as to the scope of “substantially equal” for the reasons that follow. As expressed above, claim 4 is directed to a scenario when “the displayed state of charge exceeds the estimated state of charge” and claim 7 is directed to a scenario when “the estimated state of charge exceeds the displayed state of charge.” Emphasis added. See also Req. Reh’g 4, 5. This “exceeds” language may establish clear guidance regarding one boundary (i.e., floor/ceiling or upper/lower range) of the “substantially equal” language found in claim 2, but claims 4 and 7 still remain unhelpful in providing guidance regarding the other boundary (i.e., ceiling/floor or lower/upper range) of this “substantially equal” language, which was Appeal 2020-005568 Application 16/045,798 6 likewise problematic for claim 2 (as was claim 1’s “gradually” language).4 See Decision 7–9. As such, Appellant’s contention that “claims 4 and 7 are definite” (Req. Reh’g 4) is not persuasive because, at best, only part of the ambiguity surrounding the claim term “substantially equal” may have been resolved. Appellant also takes issue with language in the Decision stating, “[a]lso troubling is Appellant’s Specification stating that the displayed state of charge is adjusted ‘at a rate twice that of the discharge rate of the battery.’” Decision 6 (quoting Spec. 64). Appellant states that their “disclosure references a controller, and such devices can identify the conditions of claims 4 and 7 and perform the required ‘twice’ calculations quickly.” Req. Reh’g 5. In other words, Appellant “fails to see an issue with tying one numerical value to another, even if one of those values changes over time.” Req. Reh’g 5. We hereby withdraw this language from our Decision. DECISION Accordingly, and based on the record presented, Appellant’s Request for Rehearing has been granted to the extent that the Board reconsidered its Decision in light of the statements made in this Request. Although the outcome of the Decision is not changed, we provide Appellant with an opportunity to seek an additional rehearing regarding claims 3–8, 11–13, 17, 4 For example, with respect to claim 4, certainty regarding a numeric value which “exceeds” the estimated state of charge, and whether this value is “substantially equal” or not, may have been resolved by such “exceeds” language. But the question still remains whether a numeric value less than the estimated state of charge is also “substantially equal” or not remains unsettled. A similar situation exists for claim 7 as well. Appeal 2020-005568 Application 16/045,798 7 18, and 20 as being indefinite under 35 U.S.C. § 112(b) as delineated above. See 37 C.F.R. § 41.52(a)(1). Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/ Basis Denied Granted New Ground 3–8, 11– 13, 17, 18, 20 112(b) Indefiniteness 3–8, 11–13, 17, 18, 20 3–8, 11–13, 17, 18, 20 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 9, 10, 14– 16, 19 112(b) Indefiniteness 1, 2, 9, 10, 14–16, 19 3–8, 11– 13, 17, 18, 20 112(b) Indefiniteness 3–8, 11–13, 17, 18, 20 1–3, 5, 6, 8–20 102 Kozaki 1–3, 5, 6, 8– 20 4, 7 103 Kozaki 4, 7 Overall Outcome 1, 2, 9, 10, 14–16, 19 3–8, 11–13, 17, 18, 20 3–8, 11–13, 17, 18, 20 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground Appeal 2020-005568 Application 16/045,798 8 of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). GRANTED; 37 C.F.R. § 41.50(b) CAPP, Administrative Patent Judge, dissenting in part. I have no objection to the majority, essentially on procedural grounds, designating a portion of the original panel decision as a new ground of rejection. Appeal 2020-005568 Application 16/045,798 9 I merely write separately to reiterate that I do not agree with the majority’s decision that the “gradually” and “substantially” terms at issue in this case do not render any of the pending claims indefinite. Therefore, I maintain the position stated in my dissent to the original panel decision.