Ebersp¿cher Controls Landau GmbH & Co. KG

Patent Trials and Appeals Board

Oct 29, 2021

2021000997 (P.T.A.B. Oct. 29, 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.
15/411,160 01/20/2017 Steffen WANDRES 75735 3718
23872 7590 10/29/2021
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
10/29/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN WANDRES and DIRK MANDERY
Appeal 2021-000997
Application 15/411,160
Technology Center 2800
Before JOSEPH L. DIXON, LARRY J. HUME, and JASON J. CHUNG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 8, 15–20, and 35–37, which are
all claims pending in the application. Appellant has canceled claims 3–7, 9–
14, and 21–34. See Appeal Br. 30 et seq. (Claims App.). An Oral Hearing
was held August 31, 2021. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Eberspächer Controls Landau GmbH & Co. KG. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to an on-board electrical system for a vehicle.
See Spec. (Title). In particular, Appellant’s disclosed embodiments and
claimed invention relate “to an on-board electrical system for a vehicle, in
which a great variety of consumers of electrical energy can be supplied.”
Spec. ¶ 2. Additionally:
In a start operating state, i.e., for starting an internal
combustion engine, the first circuit breaker 18 is switched by
corresponding actuation by means of the actuating device 20
into its diode state. The switch 32 can be closed and the starter
32 can thus be operated for starting an internal combustion
engine. A flow of current from the first constant voltage source
12, i.e., for example, a lead storage battery, to the second
constant voltage source 14, i.e., for example, a lithium ion
battery, is not possible in this state, even if the second circuit
breaker 20 is being operated in its diode state. On the other
hand, the second constant voltage source 14 is uncoupled by the
first circuit breaker 18 being operated in the diode state from
the first constant voltage source 12 and hence also from the
starter 32, so that it is guaranteed that the starter 32 is supplied
exclusively from the first constant voltage source 12 in this
starter operating state.
Spec. ¶ 25.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Aug. 4, 2020); Reply Brief (“Reply Br.,” filed Nov. 24, 2020); Examiner’s
Answer (“Ans.,” mailed Sept. 24, 2020); Final Office Action (“Final Act.,”
mailed Mar. 4, 2020); Transcript of Oral Hearing held Aug. 31, 2021
(“Transcr.”); and the original Specification (“Spec.,” filed Jan. 20, 2017).
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Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis added to contested prior-art limitations):
1. An on-board electrical system for a vehicle, the
electrical system comprising:
a first rechargeable constant voltage source;
a second rechargeable constant voltage source;
a circuit breaker device between the first constant voltage
source and the second constant voltage source, the circuit
breaker device comprising a first circuit breaker with a first
breaker input terminal and a first breaker output terminal, the
first circuit breaker permitting a flow of current between the
first breaker input terminal and the first breaker output terminal
in a first breaker conductor state and permitting only a flow of
current from the first breaker input terminal to the first breaker
output terminal in a first breaker diode state and a second
circuit breaker with a second breaker input terminal and a
second breaker output terminal, the second circuit breaker
permitting a flow of current between the second breaker input
terminal and the second breaker output terminal in a second
breaker conductor state and permitting only a flow of current
from the second breaker input terminal to the second breaker
output terminal in a second breaker diode state, wherein the
first breaker input terminal is connected to the first constant
voltage source, the first breaker output terminal is connected to
the second breaker output terminal, and the second breaker
input terminal is connected to the second constant voltage
source;
a starter connected to the first constant voltage source
and connected to the first breaker input terminal via a switch
associated with the starter;
an alternator connected to the output terminal of the first
circuit breaker and connected to the output terminal of the
second circuit breaker;
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a first group of electrical energy consumers connected to
the output terminal of the first circuit breaker and connected to
the output terminal of the second circuit breaker for providing a
power supply for the consumers of the first group by the first
rechargeable constant voltage source and the second
rechargeable constant voltage source and the alternator;
a second group of electrical energy consumers connected
to the second constant voltage source and to the input terminal
of the second circuit breaker;
an actuating device switching over the first circuit
breaker and the second circuit breaker between the conductor
state and the diode state, the actuating device being configured
to switch the first circuit breaker and the second circuit breaker
into the diode state thereof in a starter operating state for
starting an internal combustion engine, the switch associated
with the starter being provided for connecting the starter with
the first rechargeable constant voltage source for operating the
starter for starting the internal combustion engine upon
switching the first circuit breaker device and the second circuit
breaker device into the diode state thereof, such that, during
starting the internal combustion engine with the first circuit
breaker device and the second circuit breaker device being in
the diode state thereof, a flow of current between the first
constant voltage source and
the second constant voltage source is prevented and the
starter is supplied with energy from the first constant voltage
source exclusively and, under no condition, is supplied with
energy from the second constant voltage source.
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REFERENCE
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Kato US 7,336,002 B2 Feb. 26, 2008
Jabaji et al. (“Jabaji”) US 2007 /0170781 A1 July 26, 2007
Armstrong et al. (“Armstrong”) WO 2012/104264 A2 Aug. 9 2012
REJECTIONS3
R1. Claims 1, 8, 15–20, and 35–37 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Jabaji and Armstrong.
Final Act. 7.
R2. Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Jabaji, Armstrong, and Kato. Final
Act. 15.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 12–27), statements made
by Appellant’s representative during the Oral Hearing (see Transcr. 12–14),
and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection R1 of claims 1, 8, 15–20, and 35–37 on the basis of
representative claim 1. Remaining claim 2 in Rejection R2, not argued

3 We find the Examiner committed harmless error in setting forth Rejections
R1 and R2 in that claims 3–7, 9–14, and 21–34 have been canceled. See
Appeal Br. 35 (Claims App.).
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separately, stands or falls with representative independent claim 1 from
which it depends.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1, 8,
15–22, 24, 26–30, and 35–37 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 103 Rejection R1 of Claims 1, 8, 15–20, and 35–37
Issue 1
Appellant argues (Appeal Br. 12–16; Reply Br. 1–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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combination of Jabaji and Armstrong is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a]n on-board electrical system for a vehicle” that includes,
inter alia, “a first rechargeable constant voltage source[ and] a second
rechargeable constant voltage source,” wherein “the second constant voltage
source is prevented and the starter is supplied with energy from the first
constant voltage source exclusively and, under no condition, is supplied with
energy from the second constant voltage source,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
The Examiner finds Jabaji in Figure 1 discloses the structure of the
invention of claim 1, but does not include the recited “first group of
consumers.”5 Final Act. 9. The Examiner specifically finds:
The Jabaji controller opens both circuit breakers during a starter
operating state (i.e.[,] prior to ignition). With the circuit
breakers open, the orientation of the diodes (cathodes facing
each other) will prevent the flow of current between the
sources. After the switches have been opened, the ignition
switch is turned on (step 60) to power the ignition and start the
internal combustion engine. The rest of the figure 3 flow charge
(steps 64–90) occur after the engine is started with power from
the first battery (14) only.
Final Act. 9–10. Figures 1 and 3 of Jabaji are replicated below:

5 The Examiner relies upon Armstrong for this teaching, which is not
contested by Appellant. See Final Act. 11.
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“FIG. 1 shows a block diagram of a vehicle system according to a
preferred embodiment.” Jabaji ¶ 24.

“FIG. 3 is a flow chart illustrating preferred methods of controlling
electrical energy sources in the electrical system of FIG. 1.” Jabaji ¶ 26.
Appellant contends:
Claim 1 clearly provides that under no condition is the starter is
supplied with energy from a second constant voltage source.
This clearly is a departure from the teachings of Jabaji [which]
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discloses that an electrical energy source controller 12 (EESC)
12 activates switches 32 and 34 so that both electrical energy
sources apply electrical energy to a starter motor 40. The final
rejection contains the clear error in that under at least one
condition, the starter motor 40 is supplied with electrical energy
from more than one energy source.
Appeal Br. 12–13. “The final rejection further takes the position that
paragraph [0030] of Jabaji et al. discloses that one or a combination of
electrical energy sources may be used, and that this indicates that there are
different embodiments, one using only one single energy source and another
one using a plurality of energy sources. This interpretation of Jabaji et al. is
clear error.” Appeal Br. 13.
We disagree with Appellant’s contentions because, as the Examiner
finds, “Jabaji . . . has been cited to disclose all of the structure of the
independent claims. The appellants do not dispute the structural analysis of
the references or their combination. The appellant[’s] arguments are limited
to how the actuating device controls the two switches under various
conditions of the vehicle. Jabaji explicitly discloses opening both switches
(fig 3, step 58) immediately prior to starting the engine (step 60).” Final
Act. 3–4. The Examiner further finds, “Jabaji figure 3 clearly shows that
both switches are opened (step 58) immediately prior to turning on the
ignition to start the engine (step 60). With both switches open, only the first
source (14) powers the starter while the diodes prevent the flow of current
from the second battery (16). In figure 3, ‘under no conditions’ is the
second source (16) used to start the engine. These two steps are sufficient to
rebut [Appellant’s] argument. The rejection should be upheld on this
disclosure alone.” Final Act. 4. Additionally, “Jabaji then adds that the
‘switches may be activated individually or in combination so that an
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appropriate number of electrical energy sources are employed’. . . . The
Examiner has interpreted this as indicating two alternative embodiments: a
first in which only one electrical energy source is used; and a second in
which a combination of electrical energy sources are used.” Final Act. 4–5
(citing Jabaji ¶ 35).
We note paragraph 30 of Jabaji discloses, in pertinent part:
In one embodiment, both signals on input sense lines 22
and 24 are monitored and a determination is made as to the
vehicle operating condition. If both input sense lines 22 and 24
are devoid of signals, EESC 12 interprets this situation as a
vehicle at rest. This is critical for situations where EESC 12
must electrically isolate an electrical energy source to be
utilized during engine cranking. If a signal is present on line
22, but there is no signal present on line 24, EESC 12 interprets
the situation as a vehicle that is about to start. This is critical
for devices that are utilized to engage the vehicle mechanical
engine, for instance, a starter motor 40. In this scenario, EESC
12 may utilize one or a combination of electrical energy sources
in the vehicle to provide the starter motor 40 with the maximum
available electrical energy in the system.
Jabaji ¶ 30 (emphasis added). We additionally note paragraph 33 of Jabaji
discloses:
An operating condition may require that an electrical energy
source with the highest electrical energy be electrically isolated
from the electrical system to be used during a particular event,
such as to power starter motor 40 during a vehicle startup.
Accordingly, EESC 12 manipulates the corresponding switch
from switches 32 and 34 to an open-circuit position to
accomplish the task.
Jabaji ¶ 33 (emphasis added).
Accordingly, we agree with the Examiner’s finding that Jabaji teaches
or suggests an embodiment wherein “the second constant voltage source is
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prevented and the starter is supplied with energy from the first constant
voltage source exclusively and, under no condition, is supplied with energy
from the second constant voltage source,” as recited in claim 1.6
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 8, 15–20, and 35–37 which fall therewith. See Claim Grouping,
supra.
2. § 103 Rejection R2 of Claim 2
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claim 2 under § 103 (see Appeal Br. 27–28),
we sustain the Examiner’s rejection of this claim. Arguments not made are
waived.7

6 We are not persuaded by Appellant’s argument (see Transcr. p. 11, l. 9–
p. 12, l. 14) that the Examiner erred because Jabaji discloses other
alternative embodiments in which the second voltage source may supply
energy. “[T]he test is what the combined teachings of those references
would have suggested to those of ordinary skill in the art.” Keller 642 F.2d
at 425.
7 Appellant merely argues, “[a]lthough Kato et al. teaches a vehicle power
supply system, the references as a whole fail to suggest the combination of
features claimed,” referring to limitations found in independent claim 1,
discussed supra. Appeal Br. 27–28.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–9) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
We AFFIRM the Examiner’s rejections. More specifically, Appellant
has not persuasively argued that the Examiner erred with respect to
obviousness Rejections R1 and R2 of claims 1, 2, 8, 15–20, and 35–37 under
35 U.S.C. § 103 over the cited prior art combinations of record, and we
sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1, 8, 15–20,
35–37 103
Jabaji,
Armstrong
1, 8, 15–20,
35–37
2 103
Jabaji,
Armstrong,
Kato
2
Overall
Outcome
1, 2, 8, 15–
20, 35–37
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FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED