Honda has Improper TC3700 Rejection Reversed By the PTAB

In US 13/909,850, Honda seeks to patent an approach for controlling engine operation where the amount of internal exhaust gas recirculation (EGR) is calculated. Specifically, by changing a valve timing of the intake or exhaust valve, and thus adjusting the valve overlap, the amount of internal EGR is adjusted and so the approach calculates the amount of EGR. Specifically, Honda's approach calculates the internal EGR based on a center of the valve overlap position, which shifts as the valve timing shifts.

Unfortunately for Honda, this case ended up in Art Unit 3747, which has a history of unreasonable supervisors, statistically speaking. So, not unlike many other applicants, Honda was forced to appeal an unreasonable rejection. Specifically, the examiner and the two supervisors responsible for Art Unit 3747 rejected the application on the basis that a prior art reference (Koseki US 2004/0139949) anticipated the claimed features. Of course, Koseki did not actually show the claimed features but that did not stop these examiners.

Rather, these examiners maintained the anticipation rejection even though they could not point to any disclosure in Koseki of calculating the valve overlap center position, let alone determining internal EGR based on that parameter. Honda even explained the technical benefit of their claimed approach, as disclosed in the specification, in terms of improving the internal EGR calculation. Honda also cited their figures which further explained the invention in no uncertain terms.

The Examiner's Answer responding to these issues is comical. First the examiner and his supervisors try to deflect the lack of disclosure by alleging that the claim limitations at issue are calculations performed by the ECU and thus this places them "in the abstract realm." Answer page 2. Apparently this was some sort of veiled reference to an Alice rejection, even though no Section 101 rejection was present in the case (nor did the PTAB even address this issue let alone suggest any Alice problems with the claims).

Next, the Answer implies that since the claimed feature is a "calculation" then any sort of calculation could qualify, including the integrating of the area under the overlap curve since such an integration would "include the effect of all the points" and thus include the effect of the center position.  Answer, pages 2-3. Such arguments are clearly designed to obfuscate the issues and illustrate a clear lack of understanding of how the law of anticipation operates.

The PTAB made short order of the Office's improper rejection, including relying on a good point made in the reply brief. Namely, Honda correctly pointed out that the center point may change without changing the integration area, and vice versa. From the PTAB's decision:

Like Appellants, we do not see that integration of an overlap valve period is the same as calculating an overlap center position, nor do we see that Koseki teaches the claimed "overlap center position-calculating means calculates the overlap center position based on changes in the timing of at least one of the intake valve and the exhaust valve which causes the overlap center position to shift." Appeal Br. 16, Claims App. As Appellants correctly point out, "Koseki fails to disclose or suggest a method that is capable of detecting this shift in the overlap center position recited in claim 1, and shown in Figures 8 and 10. The integration disclosed in Koseki merely describes calculating an integrated value of the smaller valve opening area." Id. at 8. Comparing Appellants' Figures 8 and 10 is informative to understanding the shift in the overlap center position

Why issues as clear as this one, which are supposedly in the wheelhouse of the technical expertise of the examiner and two supervisors, require the applicant to be forced to go through an appeal process is mind boggling. Nevertheless, it is not uncommon particularly in this art unit.

So, if you find yourself arguing with examiners who believe it is appropriate to interpret distinct features as being the same, merely because they are "abstract" calculations in a controller, make sure you have set forth a clear explanation to the Board as to why the features are not correlated and hunker down for the long haul.