MAN DIESEL & TURBO SE

Patent Trials and Appeals Board

Sep 4, 2020

2019006748 (P.T.A.B. Sep. 4, 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.
14/649,499 06/03/2015 Alexander KNAFL 410001-637PUS/367617 3781
27799 7590 09/04/2020
COZEN O'CONNOR
277 PARK AVENUE , 20TH FLOOR
NEW YORK, NY 10172
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/04/2020 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):
patentdocket@cozen.com
patentsecretary@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER KNAFL, PHILLIPP HENSCHEN, PAUL HAGL,
HEIDI GRUBER, and MARKUS BAUER
Appeal 2019-006748
Application 14/649,499
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

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 MAN Diesel & Turbo
SE. Appeal Brief (“Appeal Br.”) filed June 10, 2019, at 1.
2 This Decision also cites to the Specification (“Spec.”) filed June 3, 2015,
the Final Office Action (“Final Act.”) dated December 12, 2018, the
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CLAIMED SUBJECT MATTER
The invention relates to a method for determining a cylinder pressure-
crankshaft position association for an internal combustion engine. Spec. 1,
Field of the Invention.
Claim 9, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
9. A method for operating an internal combustion engine,
comprising:
metrological detection of a crankshaft angle;
metrological detection of a cylinder pressure;
calculating a cylinder volume based at least in part on the
crankshaft angle;
determining a curve for a logarithmic cylinder pressure
over a logarithmic cylinder volume based at least in part on the
crankshaft angle;
determining an offset value for the crankshaft angle for
determining a temporally exact cylinder pressure-crankshaft
position association from the curve;
concluding that a cylinder pressure signal is retarded in
relation to a crankshaft angle signal when an intersection of
curve segments of the curve is determined in a region of a
cylinder reversal point;
determining a surf ace area between the curve segments
of the curve in the region of the cylinder reversal point;
determining an offset value for compensating
displacement as a function of the surface area between the

Examiner’s Answer (“Ans.”) dated July 15, 2019, and the Reply Brief
(“Reply Br.”) filed September 13, 2019.
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curve segments of the curve in the region of the cylinder
reversal point; and
operating the internal combustion engine based at least in
part on the temporal association of the cylinder pressure with a
crankshaft position and the offset to minimize the offset and
increase operating efficiency of the internal combustion engine.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 9–17 under 35 U.S.C. § 112 (pre-AIA), first paragraph,
as failing to comply with the written description requirement;
and
2. Claims 9–17 under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite.
OPINION
After review of the Examiner’s and Appellant’s opposing positions,
Appellant’s claims and Specification disclosures, we determine that
Appellant’s arguments are insufficient to identify reversible error in the
Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated written description and indefiniteness
rejections of claims 9–17 for substantially the reasons set forth in the Final
Office Action and the Examiner’s Answer. We add the following primarily
for emphasis.
Rejection 1: Written Description
The Examiner finds that the Specification fails to provide written
description support for how one would perform four steps of the method of
claim 9. Final Act. 10–11. These four steps are: 1) determining an offset
value for the crankshaft angle for determining a temporally exact cylinder
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pressure-crankshaft position association from the curve; 2) concluding that a
cylinder pressure signal is retarded in relation to a crankshaft angle signal
when an intersection of curve segments of the curve is determined in a
region of a cylinder reversal point; 3) determining an offset value for
compensating displacement as a function of the surface area between the
curve segments of the curve in the region of the cylinder reversal point; and
4) operating the internal combustion engine based at least in part on the
temporal association of the cylinder pressure with a crankshaft position and
the offset. Id. at 11. The Examiner finds that the Specification lacks
algorithms or equations or description of the hardware and/or
software and/or the method steps that [Appellant] has used to
practice the claimed invention, including, specifically, any
details of the structure used to allegedly control the internal
combustion engine, as well as any method steps or algorithms for
controlling the internal combustion engine.
Id. Moreover, the Examiner finds that the Specification fails to describe how
the method is practiced using the temporal association between cylinder
pressure and crankshaft position to operate the internal combustion engine to
increase operating efficiency of the engine. Id. In particular, the Examiner
finds that the Specification fails to disclose any means or method steps for
controlling the engine, how such control would minimize “offset,” and how
minimizing “offset” results in improved operating engine efficiency. Id.
With regard to dependent claims 10–17, the Examiner finds that these claims
similarly recite analyzing and determining steps “for which there is no
corresponding written description in the Specification for how to perform
the steps.” Id.
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Appellant argues that the Examiner failed to show that a person of
ordinary skill in the art could not practice the invention without undue or
unreasonable experimentation. Appeal Br. 4. Appellant asserts that the
Specification describes a method for automatically determining a cylinder
pressure-crankshaft position association for the cylinders of an internal
combustion engine. Id. Appellant also asserts that the Examiner agrees that
an operator “could certainly look at the curves in the Figures and determine
that which [Appellant] claims is determined.” Id., citing the Advisory Action
(“Adv. Act.”) dated April 5, 2019, at 3. In addition, Appellant asserts that
the Specification states that it is “advantageous” to know an exact temporal
association of the cylinder pressure (“P”) and crankshaft position or angle.
Id., citing Spec. ¶ 3; see also Reply Br. 1–3.
Appellant further asserts that the Specification describes determining
a curve for logarithmic (“log”) cylinder P over log cylinder volume (“V”)
from a detected cylinder pressure and a calculated cylinder V calculated
from a detected crankshaft angle, analyzing this curve at the region of a
bottom or top cylinder reversal point and determining an offset value for the
crankshaft angle from the curve for determining the temporally exact
cylinder P-crankshaft position association. Appeal Br. 4–5. Appellant then
asserts that the offset is determined from the graphs (curves) of log P over
log V by determining the surface area between two curve segments 11, 12 in
the region of reversal point 13, wherein “[t]he efficiency is increased by
minimizing the offset.” Id. at 5. Therefore, Appellant further contends that
those skilled in the art would reasonably conclude that Appellant possessed
the claimed invention on the basis of these descriptions, which is further
“buttressed by the maturity and predictability of the art.” Id. at 6.
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The test for sufficiency of a written description is whether the
disclosure of the application relied upon “reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Possession means “possession as
shown in the disclosure” and “requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Id.
Written description under the first paragraph of 35 U.S.C. § 112 does
not require literal support for the claimed invention. Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the
written description requirement, the disclosure as originally filed does not
have to provide in haec verba support for the claimed subject matter at
issue.”); In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards,
568 F.2d 1349, 1351–52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). Neither does appearance of a claim ipsis verbis in the
specification guarantee that the written description requirement is satisfied,
see, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir.
2002). In addition, the written description requirement does not demand
either examples or an actual reduction to practice. Ariad, 598 F.3d at 1352.
Nonetheless, the disclosure must convey with reasonable clarity to those
skilled in the art that the inventor was in possession of the invention.
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122
(Fed. Cir. 2008).
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s finding that the claims fail to comply with the written
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description requirement of 35 U.S.C. § 112, first paragraph. To begin, the
Examiner correctly notes, and Appellant fails to contest, that Appellant
improperly conflate the enablement standard (undue experimentation) with
the written description standard (reasonably conveys possession). Ans. 7. In
this regard, as the Examiner further notes, maturity of the art and
predictability of the art are factors primarily relevant to enablement, rather
than written description. Id. Moreover, Appellant does not direct our
attention to evidentiary support for any level of maturity and predictability
of the art, nor does Appellant explain in any detail how such factors favor a
conclusion that the Specification reasonably conveys the Inventors’
possession of the claimed invention.
Claim 9 recites determining two offset values, a first offset value for
the crankshaft angle for determining a temporally exact cylinder P-
crankshaft position association, and a second offset value for compensating
displacement as a function of the surface area between the curve segments of
the curve in the region of the cylinder reversal point. The Specification
teaches that an offset value is obtained by analyzing the log P over log V
curve, preferably in the region of a cylinder reversal point, and, depending
on this analysis, this offset value is determined. Spec. 2:5–12; 3:17–30. The
Specification explains how the curve is analyzed: when curve segments in
the region of the cylinder reversal point intersect, it is concluded that the
cylinder P signal is retarded relative to the crankshaft angle signal, whereas
when the curve segments do not intersect (non-intersection), it is concluded
that the cylinder P signal is premature relative to the crankshaft angle signal.
Id. at 2:13–22; 4:12–18. The Specification further explains that an offset
value for compensating this displacement is determined as a function of the
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surface area between the curve segments in the region of the cylinder
reversal point. Id. at 2:13–22; 4:19–22.
Given this disclosure, if two offset values are determined as recited in
claim 9, the Specification only describes how the second offset value is
determined, i.e., determining the surface area between the curve segments in
the region of the cylinder bottom reversal point. Although the Specification
recites an offset value for the crankshaft angle for determining a temporally
exact cylinder pressure-crankshaft position association that is determined
from the curve, Appellant fails to direct our attention to any description for
the determination of this offset value that is different from the determination
of the second offset value recited in claim 9.
Moreover, although automatic calculation of the surface area between
two curve segments might be possible, Appellant does not define with any
specificity “the region of the cylinder reversal point.” In other words,
Appellant does not define this region other than it is at the cylinder reversal
point. One would have to speculate as to how far up curve segments 11, 12
the region is supposed to be. To add further difficulty to determining this
offset value, we note that Figure 2b, which is supposed to show retarded
cylinder P signal relative to the crankshaft angle signal does not appear to
have any surface area between curve segments 11, 12 for a significant
portion of their length in the vicinity of bottom reversal point 13.
Turning next to the step of determining an offset value for
compensating displacement as a function of the surface area between the
curve segments in the region of the cylinder reversal point, as the Examiner
correctly finds, the Specification fails to describe how this offset value is
actually determined. Ans. 5–6. The only disclosed relationship between the
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calculated surface area between the curve segments and this offset value is
that “[t]he larger this surface area, the larger the resulting offset value.”
Spec. 4:22–23. However, knowing that two values are proportional does not
adequately describe their relationship in a manner that those skilled in the art
would recognize how to derive one (the offset value) from the other (the
surface area).
Finally, with regard to the step of operating the internal combustion
engine based at least in part on the temporal association of the cylinder P-
crankshaft position and the offset to minimize the offset and increase the
engine’s operating efficiency, the Examiner finds that the Specification is
silent as to how the engine is controlled using the offset value, and how such
control minimizes the offset and improves the engine’s operating efficiency.
Ans. 6. Appellant fails to rebut or otherwise address these findings. In
addition, we note that the Specification fails to identify any engine operating
parameter that can be controlled based at least in part on the offset value or
the temporal association of the cylinder P with crankshaft position, or so as
to alter the offset value or the surface area between the curve segments in the
region of the cylinder reversal point, or to improve engine operating
efficiency.
Accordingly, we agree with the Examiner that the Specification, as
originally filed, fails to reasonably convey to those skilled in the art that the
Inventors possessed the invention of claim 9. Further, Appellant fails to
rebut or otherwise address the Examiner’s finding that the Specification
likewise fails to reasonably convey to those skilled in the art that the
Inventors possessed the invention of dependent claims 10–17.

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Rejection 2: Indefiniteness
The Examiner determines that claim 9 is indefinite because it is not
clear how the four steps discussed above would be performed because
neither the Specification nor claim 9 sets forth any structure or steps
sufficient to enable control of the operation of an internal combustion
engine. Final Act. 12–13; see also Ans. 7–8. Appellant merely contends that
“the claims are indeed definite at least because the claimed method is clearly
disclosed as discussed above [in response to the written description
rejection].” Appeal Br. 6; see also Reply Br. 4.
“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The
language in 35 U.S.C. § 112, second paragraph, “of ‘particular[ity]’ and
‘distinct[ness]’ indicates[] claims are required to be cast in clear—as
opposed to ambiguous, vague, indefinite—terms.” Packard, 751 F.3d at
1313 (alterations in original). Although exact precision is not required, the
claim language must be as reasonably precise as the subject matter permits.
Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (The first
inquiry “is merely to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.”).
Appellant’s contention fails to address the Examiner’s rejection with
any specificity. To the extent that Appellant relies on the arguments raised
against the Examiner’s written description rejection, we note that these
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arguments were not persuasive of reversible error as set forth above. Further,
we are in complete agreement with the Examiner that claim 9 is indefinite
because it fails to recite how the engine is to be operated to minimize offset
and improve engine efficiency, i.e., it fails to identify any engine operating
parameter that can be controlled based at least in part on the offset value or
the temporal association of the cylinder P with crankshaft position, or so as
to alter the offset value or the surface area between the curve segments in the
region of the cylinder reversal point, or to improve engine operating
efficiency.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 9–17 under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement, and
second paragraph, as indefinite.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9–17 112, 1st ¶ Written Description 9–17
9–17 112, 2nd ¶ Indefinite 9–17
Overall
Outcome
9–17

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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