Kozarekar, Shailesh Shrikant. et al.

Patent Trials and Appeals Board

Oct 1, 2019

13198740 - (R) (P.T.A.B. Oct. 1, 2019)

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.
13/198,740 08/05/2011 Shailesh Shrikant Kozarekar 83178690 8397
28395 7590 10/01/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
WHALEN, MICHAEL F
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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 SHAILESH SHRINKANT KOZAREKAR and
GREGORY DEAN GARDNER1
____________

Appeal 2019-000467
Application 13/198,740
Technology Center 3600
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Shailesh Shrinkant Kozarekar and Gregory Dean Gardner
(“Appellants”) filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52 on August 27, 2019, of the Decision on Appeal 2019-000467 mailed
June 27, 2019 (“Decision”).

1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. Appeal Br. 1.
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Application 13/198,740

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Below is a summary of our Decision:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4, 7–13,
15, 17, 19–
21, 23–26
112(a) Written
Description
1, 4, 7–13,
15, 17, 19–
21, 23–26

1, 4, 7, 8, 12,
15, 17, 21,
23–26
102(b) Minagawa2 1, 4, 7, 8, 12,
15, 17, 21,
23–26
9–11, 13, 19,
20
103(a) Minagawa 9–11, 13, 19,
20
Overall
Outcome
1, 4, 7–13,
15, 17, 19–
21, 23–26

Decision 10.

ORIGINAL DECISION ON APPEAL
In our Decision, we affirmed the Examiner’s written description
rejection and agreed with the Examiner that the claimed terms “when a
vehicle speed is above a threshold speed,” “motoring mode,” and “operating
a generator in a reverse direction” lack written description support.
Decision 3–9.
We further agreed with the Examiner that “motoring mode” and
“operating the generator in reverse direction” may have multiple different
interpretations, and absent any written description support or other evidence
of record, we could not discern the meaning of the limitations. See id. at 6–
8; see also, e.g., Ans. 8 (“[T]he term ‘motoring-mode’ could have many

2 Minagawa is U.S. Patent Publication Number 2003/0181276 A1, published
Sept. 25, 2003.
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Application 13/198,740

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different meanings”); see also, e.g., Ans. 9 (“The term ‘reverse direction’
could [have] multiple different interpretations”).
Because we could not discern the meaning of the terms “motoring-
mode” and “operating the generator in reverse direction,” and although we
did not exercise our discretion to enter a new ground of rejection of the
claims under 35 U.S.C. § 112, second paragraph, as also being indefinite, we
nevertheless reversed pro forma the prior art rejections based on Minagawa.
See Decision 9–10. As explained in the Decision, reviewing the merits of
the prior art rejections would resort to unsupported speculative assumptions
as to the scope of the claims. See id. at 9 (citing: Ex parte Miyazaki, 89
USPQ2d 1207, 1217 (precedential) (BPAI 2008); Ex parte Smith, 2008 WL
4998624 (BPAI 2008); and In re Steele, 305 F.2d 859, 863 (CCPA 1962)).

APPELLANTS’ CONTENTIONS
Appellants’ Request alleges that the Board “has misapprehended and
overlooked the Appellants’ remarks in the Appeal Brief and Reply Brief that
the term ‘motoring mode’ is supported by the specification, as the term is
used in the claims.” Request 2 (emphasis added).
Appellants’ Request further alleges that “the Board misapprehended
the Appellants’ arguments regarding the claim Examiner’s claim [sic]
interpretation in the Reply Brief,” namely, the claimed “motoring-mode.”
Request 2–3.
We disagree with Appellants’ assertions that we overlooked or
misapprehended Appellants’ arguments.

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Application 13/198,740

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ANALYSIS
Appellants’ contention that the term “motoring mode” is supported by
the Specification because of how the term is “used in the claims”
(Request 2) is unpersuasive circular logic. The claims are rejected for
lacking written description support from the original specification, and
Appellants’ attempt to rely on amended claims to provide the subject matter
support does not address the rejection before us. In other words, the
originally filed claims do not recite the term “motoring mode,” and
Appellants cannot cite to the amended claim language as providing the
needed subject matter support. See Spec. 9–12 (claims).
As to Appellants’ Appeal and Reply briefs, Appellants also contend
that paragraph 17 of the Specification provides written description support
for the claimed “motoring mode.” See Appeal Br. 10 (citing Spec. ¶ 17); see
also Reply Br. 4 (citing Spec. ¶ 17). As explained in our Decision, however,
“Paragraph 17 of the Specification does not use the term ‘motoring mode’
and Appellants do not submit declaration evidence to support its contention
that a skilled artisan would understand ‘motoring-mode’ to mean the
generator operating as a motor.” Decision 6 (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)). Indeed, and upon reviewing the entirety of
Appellants’ original disclosure, we find no reference to “motoring-mode” to
guide us in our understanding of the term. “The meaning of every term used
in any of the claims should be apparent from the descriptive portion of the
specification with clear disclosure as to its import.” MPEP § 608.01(o).
“[A]n issue of new matter will arise if the content of [an] amendment is not
described in the application as filed.” MPEP § 2163.06. “If new matter is
added to the claims, the examiner should reject the claims under [] 35 U.S.C.
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112, first paragraph - written description requirement.” Id. This is precisely
what the Examiner did. Final Act. 3–4; Decision 4–5.
Moreover, we further agree with the Examiner that the term does not
have a standard meaning and that it may mean many different things, such as
the motor driving the vehicle. See id. (citing Ans. 8); see also Ans. 8 (“the
term ‘motoring-mode’ could have many different meanings . . . [such as]
referring to when the vehicle is being driven using the motor.”).
As to Appellants’ contention that we “misapprehended the
Appellants’ arguments regarding the claim Examiner’s claim [sic] term
interpretation” of “motoring-mode,” we also disagree. Request 2–3.
Appellants argue that the Examiner’s interpretation of the term “would be
redundant under the Examiner’s interpretation of Minagawa,” (id. at 3), but
the issue is not whether the Examiner’s interpretation of the term would
somehow be redundant. Rather, our inability to address the prior art
rejections stems from our inability to make heads-or-tails of the claimed
terms, including “motoring-mode” and “operating the generator in reverse
direction.” See Decision 9. Although we did not exercise our discretion
under 37 C.F.R. § 41.50(b) to enter a new ground of rejection under 35
U.S.C. § 112, second paragraph, for indefiniteness, this lack of clarity
precluded us from reaching a conclusion regarding the Examiner’s prior-art
rejections.
To reiterate, we simply cannot discern what “motoring-mode” means,
and additionally find that neither the Specification nor other evidence of
record (e.g., declaration testimony) supports the term. Id. As explained in
our Decision, addressing the prior art rejections would require us to resort to
unsupported speculative assumptions as to the scope of the claimed terms,
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Application 13/198,740

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including, “motoring-mode” and “operating the generator in reverse
direction.” See id.
Finally, Appellants request that we reconsider the prior art
rejections—even though we reversed them pro forma—presumably due to
our misapprehension of the claimed term “motoring-mode.” See Request 2–
3. Missing from Appellants’ Request, however, is any discussion as to the
claimed term “operating the generator in reverse direction” (see id.), which
we are also unable to interpret based on the lack of any written description
support. See Decision 6–8; see also id. at 9 (“the claims recite multiple
limitations (e.g., ‘motoring-mode,’ ‘operating the generator in reverse
direction’) that are not supported by the Specification and which we, frankly,
do not understand.”). In other words, even if we agreed with Appellants’
interpretation of the claimed “motoring-mode,” we would still have to resort
to speculative assumptions about the claim limitation “operating the
generator in reverse direction” in addressing the prior art rejections.
For the above reasons, the arguments in Appellants’ Request do not
apprise us of error in our Decision.

DECISION
We have granted Appellants’ Request to the extent that we have
considered our Decision in light of the points raised therein, but have denied
the Request with respect to any modification to the Decision.

Appeal 2019-000467
Application 13/198,740

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Below is a summary of our Rehearing Decision:
Claim(s)
Rejected
35 U.S.C. § Basis Granted Denied
1, 4, 7–13,
15, 17, 19–
21, 23–26
112(a) Written
Description
1, 4, 7–13,
15, 17, 19–
21, 23–26
1, 4, 7, 8, 12,
15, 17, 21,
23–26
102(b) Minagawa 1, 4, 7, 8, 12,
15, 17, 21,
23–26
9–11, 13, 19,
20
103(a) Minagawa 9–11, 13, 19,
20
Overall
Outcome
1, 4, 7–13,
15, 17, 19–
21, 23–26
Below is a summary of the outcome of our Rehearing Decision:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4, 7–13,
15, 17, 19–
21, 23–26
112(a) Written
Description
1, 4, 7–13,
15, 17, 19–
21, 23–26

1, 4, 7, 8, 12,
15, 17, 21,
23–26
102(b) Minagawa 1, 4, 7, 8, 12,
15, 17, 21,
23–26
9–11, 13, 19,
20
103(a) Minagawa 9–11, 13, 19,
20
Overall
Outcome
1, 4, 7–13,
15, 17, 19–
21, 23–26

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).

DENIED