Ex Parte 7797958 et al

Patent Trial and Appeal Board

Sep 18, 2012

90009825 (P.T.A.B. Sep. 18, 2012)

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.
90/009,825 09/21/2010 7797958 075397-0193 6361
52450 7590 09/18/2012
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/18/2012 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 CROSSPOINT SOLUTIONS LLC.1
Appellant, Patent Owner
____________________

Appeal 2012-008637
Reexamination Control 90/009,825
Patent No. US 7,797,958 B22
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Glacier Bay, Inc. is identified as the real party in interest in the Appeal
Brief filed on September 30, 2011 (hereinafter "App. Br.") but the
Assignment of record subsequently filed on July 19, 2012 indicates that
Patent No. US 7,797,958 B2 (hereinafter "'958 patent") has been assigned to
Crosspoint Solutions LLC.

2 Issued September 21, 2010.
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The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a
Final Rejection of claims 1-31, independent claim 1 having been amended
while claims 20-31 have been added during the reexamination proceeding.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. In addition to the
Appeal Brief, the Patent Owner also relies on a Reply Brief filed on March
26, 2012 (hereinafter "Reply Br.") and a Declaration of Mr. Jason Hufford
dated March 9, 2011. An oral hearing with the Appellant's representative
was held on September 5, 2012, a transcript of which will be electronically
entered into the record in due course.
The invention is directed to a heating, ventilation and air conditioning
(hereinafter "HVAC") system that is installed in a vehicle, the system
including a battery management system (Title; Col. 1, ll. 7-9). Claims 1 and
20 are independent claims, representative claim 1 being reproduced below
(App. Br. 23, Claims App'x., underlining of amended text omitted):
1. (Amended) An HVAC system to be installed in a
vehicle having an engine comprising:
a battery management controller comprising: at
least one connection for electrically coupling a first
power source with a first voltage; at least one connection
for electrically coupling a second power source with a
second voltage;
wherein the battery management controller is
configured to run a temperature control system when the
vehicle engine is off and to supply power to the
temperature control system when the vehicle engine is
off from a combination of the first and second power
sources with a combined voltage, wherein the second
power source is electrically separated when the combined
voltage drops below a predetermined amount.

The evidence relied upon by the Examiner in rejecting the claims is:
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Mehdi et al. 4,616,484 Oct. 14, 1986
Gale et al. 6,737,756 B1 May 18, 2004
Zeigler et al. 6,889,762 B2 May 10, 2005
Kim 2006/0139007 A1 June 29, 2006
Nite, No-Idle, Installation Instructions, Model 9000i Post June 2002
(hereinafter "Installation Instructions")
Sure Power Industries, Inc., Battery Separator, The Smart Solenoid3
(hereinafter "Battery Separator")

The Examiner rejected the following claims under 35 U.S.C. § 103(a)
as unpatentable over the noted combination of references:
1. Claims 1-3, 6-15, 17-20 and 23-31 based on the combination of
Zeigler, Installation Instructions and Battery Separator.
2. Claims 4, 5, 21 and 22 based on the combination of Zeigler,
Installation Instructions and Battery Separator, further in view of Kim.
3. Claim 16 based on the combination of Zeigler, Installation
Instructions and Battery Separator, further in view of Mehdi.
4. Claims 1-3, 7, 17, 18, 20, 24 and 30 based on the combination of
Gale and Battery Separator.
5. Claims 4, 5, 21 and 22 based on the combination of Gale and
Battery Separator, further in view of Kim.
6. Claims 6, 8-15, 19, 23, 25-29 and 31 based on the combination of
Gale and Battery Separator, further in view of Zeigler.
7. Claims 8, 16 and 25 based on the combination of Gale and Battery
Separator, further in view of Mehdi.

3 While the publication date is not indicated, the Appellant does not dispute
the prior art status of this document.
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8. Claims 18 and 30 based on the combination of Gale and Battery
Separator, further in view of Installation Instructions.
We REVERSE.

ISSUE
The dispositive issue of the appeal is whether the Examiner erred in
concluding that it would have been obvious to modify the systems of Zeigler
or Gale based on Installation Instructions and/or Battery Separator to result
in the claimed invention.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. A. Installation Instructions discloses an air conditioning system
that is operable without idling the engine of the vehicle, and states
"[t]he NITE system operates independently off of it's [sic] own
deep cycle batteries and is completely isolated away from the
trucks starting batteries." (Pg. 3).
B. Installation Instructions also states "[t]he isolator acts as a
check valve between the NITE batteries and the truck[']s starting
batteries. This eliminates the multi-battery drain problem. . . .
[The separator] has the same purpose as the isolator but acts
differently" in that "[i]t is electrically connected between the truck
batteries and the NITE batteries." (Pg. 6).

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2. Battery Separator states the following:
A. "IF the chassis' battery [voltage] is lower than the auxiliary
battery bank, the BATTERY SEPARATOR will engage allowing
the auxiliary battery bank to aid in vehicle starting." (Pg. 1).
B.
The BATTERY SEPARATOR monitors the
battery system to determine if the batteries are
being charged. . . . If the drain on the
charging system by the auxiliary system or
main battery bank reduces the system voltage
below 12.4-12.9 volts, the BATTERY
SEPARATOR will disconnect the battery
banks from each other, thus protecting the
respective battery banks from excessive drain.
(Pg. 1).

C. "The priorities are to assist in engine starting, if required, and to
protect the charging system from excessive power drain." (Pg. 1).
D.
Start the vehicle or apply a charge to the main
battery. Once the main battery rises to 13.2-
13.5V the Battery Separator should activate.
Turn off the vehicle or remove the charge to
the main battery. The Battery Separator
should disconnect the auxiliary battery once
the voltage on the main battery drops below
12.4-12.9V.
(Pg. 2).

3. In his Declaration, Mr. Jason Hufford states:
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A. "Hundreds of the NITE Systems that I installed included the
Sure Power Battery Separator disclosed in the brochure attached as
Exhibit B [Battery Separator] to this declaration." (¶ 4).

B.
In operation, I observed that when the engine
stops running, the system voltage very quickly
drops below the disconnect set point and the
Battery Separator disconnects the engine
battery from the auxiliary battery. I also
observed that when the engine is off and the
air conditioning system is running, the Battery
Separator is open or disconnected so that the
engine battery is disconnected from the
auxiliary battery preventing the air
conditioning system from drawing power
from the engine battery. Thus, when the
engine is not running, the Battery Separator
prevents supplying power to the HVAC
system from two different power sources.
Only the auxiliary battery bank can be used to
supply the air conditioning system.
(¶ 7).

PRINCIPLES OF LAW
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). The entirety of the reference must be considered. In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965) ("It is impermissible within the
framework of section 103 to pick and choose from any one reference only so
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much of it as will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art.").

ANALYSIS
Rejections 1-3 based on the combination of Zeigler, Installation
Instructions and Battery Separator
In these rejections, the Examiner finds that Zeigler discloses all of the
limitations of the independent claims "except for the power source being two
electrically separable batteries allowing for use of a combined voltage."
(Ans. 5). The Examiner finds that the Installation Instructions discloses the
use of multiple batteries in a vehicle with an auxiliary HVAC system, and an
electrical separator which "prevents drawing down of the engine starter
batteries." (Ans. 5-6, citing Installation Instructions, Pgs. 8, 27, 28). The
Examiner finds that Battery Separator also discloses combining two battery
groups to assist engine starting, but which are "electrically separated if a
combined voltage drops below a present level." (Ans. 6). The Examiner
concludes that it would have been obvious for a person of ordinary skill in
the art to "associate use of a combined voltage with the two groups of
batteries, and associate electrical separation between the groups, in order to
maximize auxiliary HVAC system operation time without jeopardizing
vehicle starting capability" and asserts that such use of an electrical
separator "amounts to a difference in design choice." (Ans. 6).
The Appellant argues that both Installation Instructions and Battery
Separator teach away from modifying Zeigler in the manner suggested by
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the Examiner to result in the claimed invention which requires supplying of
"power to the temperature control system when the vehicle engine is off
from a combination of the first and second power sources with a combined
voltage," as recited in claim 1 (App. Br. 4-5). The Appellant argues that
Battery Separator merely addresses charging of two batteries when the
engine is running as well as combining the two batteries to aid vehicle
starting (App. Br. 5, 8-9), and directs our attention to the Declaration of
Hufford which states, inter alia, that "when the engine is not running, the
Battery Separator prevents supplying power to the HVAC system from two
different power sources." (See App. Br. 5 (emphasis in original); Decl. ¶ 7).
The Appellant also points out that the reason for modifying the system of
Zeigler set forth by the Examiner mimics the benefit of the claimed
invention as set forth in the '958 patent (App. Br. 9).
We agree with the Appellant. Installation Instructions is clear in its
disclosure that the HVAC system is operated "independently" and
"completely isolated" from the starting battery (FF 1A, 1B). Thus, it teaches
that in operating the HVAC system with the vehicle engine off, the starter
battery should be separated from the auxiliary battery, thereby leading one
of ordinary skill in a direction divergent from that of the claimed invention.
The Battery Separator discloses monitoring "the battery system" and when
the "drain on the charging system" reduces the system voltage below 12.4-
12.9 volts, disconnecting the battery banks from each other via the separator
(FF 2B). Hence, the Battery Separator discloses separation of the batteries
during charging, which is generally when the engine is on, not when the
engine is off as recited in the claims (FF 2B; see also FF 2C, 2D). The
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testimonial evidence also unequivocally states that the separator disclosed in
Installation Instructions is the same as that disclosed in the Battery Separator
document, and that when the engine is off, the Battery Separator separates
the starter battery and the auxiliary battery (FF 3A, 3B).
The essence of the Examiner's position is that because electrical
separators are known in the art, it would have been obvious to modify the
system disclosed in Zeigler to attain the claimed invention as a "design
choice." However, the Examiner's conclusion ignores the broader teachings
of both the Installation Instructions and the Battery Separator (as supported
by the declaration evidence of record) that it is undesirable to draw power
from the starter battery when the vehicle engine is off. "[A] patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art." KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In the facts
of the present case, we are of the view that a person of ordinary skill in the
art, upon review of Installation Instructions and Battery Separator, "would
be led in a direction divergent from the path" that was taken in the '958
patent. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965).
As to the Examiner's argument that the system of Battery Separator
still works "regardless of whether a vehicle engine is on or off" (Ans. 15), in
particular, "when the batteries were subject to charging via a dedicated
battery charger (engine off)" (Ans. 17), we observe that the Examiner's
rejections do not appear to be based on reading a "battery charger" as a
power source recited in the claims. In addition, when a dedicated battery
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charger is utilized, the purpose is for charging the auxiliary and/or engine
battery (FF 2B and 2D). There is no persuasive evidence that the charge
applied to the main battery when the batteries are connected for charging
provides "a combination of the first and second" power sources for operation
of any ancillary loads, as recited in the claims. Correspondingly, we are not
persuaded by this line of reasoning.
The remaining disagreements between the Examiner and the
Appellant with respect to Rejection 1 are moot. Rejections 2 and 3 (Ans. 7-
8) rely on the disclosures of Installation Instructions and Battery Separator
as set forth in Rejection 1. The Examiner's application of Kim or Zeigler in
Rejections 2 and 3, respectively, does not cure the deficiencies of Rejection
1. Hence, these rejections are also not sustained.

Rejections 4-11 based on the combination of Gale and Battery
Separator
In these rejections, the Examiner finds that Gale discloses all of the
limitations of the independent claims "except for the provision of electrically
separating the batteries upon detection of low combined voltage." (Ans. 9).
The Examiner finds that "Gale clearly teaches that the
combination/separation device functions to combine the voltage of the two
batteries to assist in engine starting." (Ans. 8; see also FF 2A). The
Examiner also finds that Battery Separator discloses a battery management
controller having electrical separation and concludes that it would have been
obvious to a person of ordinary skill in the art "to associate electrical
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separation with the Gale battery management controller in order to protect
the batteries from excessive drain." (Ans. 9).
The Appellant's arguments against these rejections are substantively
the same as those proffered for Rejection 1 with respect to Battery Separator
(see App. Br. 12-14, 19). We agree with the Appellant for the reasons
already discussed supra. Furthermore, whereas the Examiner asserts that
switch SW3 shown in Figure 2 of Gale can be used to couple either 42 volts
or 84 volts (Ans. 22), as pointed out by the Appellant (Reply Br. 5), Figure 2
of Gale illustrates that voltage from only battery 14 is provided to the
auxiliary load (Aux. Loads 26, which includes the HVAC system) by virtue
of its receipt of electrical power via node N2 which is positioned between the
connections of battery 14 and battery 20 (Gale, col. 2, ll. 44-48; Fig. 2).
Thus, Rejection 4 is not sustained.
As to Rejections 5-8, these rejections rely on the disclosure of Battery
Separator, and the Examiner's application of Kim, Zeigler, Mehdi and
Installation Instructions in Rejections 5, 6, 7 and 8, respectively, does not
cure the deficiencies of Rejection 4. Correspondingly, Rejections 5-8 are
likewise not sustained.

CONCLUSION
Because the Examiner erred in concluding that it would have been
obvious to modify the systems of Zeigler or Gale based on Installation
Instructions and/or Battery Separator to result in the claimed invention,
Rejections 1-8 are REVERSED.

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REVERSED

KMF

Patent Owner:

KRIEG DEVAULT LLP
One Indiana Square
Suite 2800
Indianapolis, IN 46204-2079

Third Party Requester:

Jeffery J. Makeever
REINHART BOERNER VAN DEUREN P.C.
2215 Perrygreen Way
Rockford, IL 61107