Ex Parte 7910833 et alDownload PDFPatent Trials and Appeals BoardOct 28, 201495002365 - (D) (P.T.A.B. Oct. 28, 2014) Copy Citation 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. 95/002,365 09/14/2012 7910833 57378-0011 2612 86022 7590 10/28/2014 Jerold I. Schneider Schneider Rothman IP Law Group 4651 North Federal Highway Boca Raton, FL 33431 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/28/2014 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 ________________ SUPERIOR COMMUNICATIONS, INC. Requester and Cross Appellant v. VOLTSTAR TECHNOLOGIES, INC. Patent Owner and Appellant ____________ Appeal 2014-007294 Reexamination Control 95/002,365 Patent US 7,910,833 B2 Technology Center 3900 ________________ Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DAVID M. KOHUT, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 2 SUMMARY This proceeding arose from a request by Superior Communications for an inter partes reexamination of US Patent 7,910,833 B2, titled “ENERGY-SAVING POWER ADAPTER/CHARGER” (issued to Valerie L. McGinley et al. on Mar. 22, 2011 from Application 12/127,592, filed May 27, 2008) (“the ’833 Patent”). We have jurisdiction under 35 U.S.C. §§ 134(b), (c) and 315(a), (b). The ’833 Patent describes the invention as follows: An embodiment of the present invention is directed to a power device for an electronic device, such as a charger for a portable rechargeable device and/or an AC adapter. The power device includes switching circuitry for de-powering at least a portion of the power device when the electronic device is either not drawing power or is disconnected from the power device. Abstract. Independent claims 1 and 11, reproduced below, are illustrative: l. A power device for supplying power to a portable rechargeable electronic device, the power device comprising: a first portion for receiving electrical input power from a source, the input having an input voltage; a second portion for delivering electrical output power to the electronic device, the output power having a DC output voltage; a connector located on the second portion and removably connectable with the electronic device; and a switch assembly having a member movable to and between first and second positions corresponding to respective “on” and “off” states of the power device, wherein the power device receives the input power in the “on” state, and the power device draws no input power in the “off” state. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 3 11. A power device for supplying power to a portable rechargeable electronic device, the power device comprising: a first portion for receiving electrical input power from a source, the input having an input voltage; a second portion for delivering electrical output power to the electronic device, the output power having an output voltage; circuitry for converting the input power voltage to the output power voltage and for determining an “off” state of the circuitry; a connector located on the second portion and removably connectable with the electronic device; and a switch assembly having powered terminals, the switch assembly responsive to movement or at least a movable portion thereof to electrically connect the terminals and to provide an output signal to activate the circuitry to the “on” state, wherein the circuitry automatically turns the circuitry to the “off” state, the circuitry drawing no power when in the “off” state. Patent Owner, Voltstar Technologies, Inc., formerly Horizon Technologies, Inc. (“Owner”), appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s decision to reject claims 1-23 and 56-58 over the prior art. See PO App. Br. 1 Third Party Requester, Respondent and 1 Throughout this opinion, we refer to (1) the Request for Inter Partes Reexamination filed September 14, 2012 (“Request”); (2) the Right of Appeal Notice mailed August 2, 2013 (“RAN”); (3) Patent Owners’ Appeal Brief filed November 4, 2013 as corrected by Owner’s Supplemental Appeal Brief filed November 21, 2013 (“PO App. Br.”); (4) Requester’s Appeal Brief filed November 5, 2013 (“3PR App. Br.”); (5) Owner’s Respondent Brief filed December 4, 2013 (“PO Resp. Br.”); (6) Requester’s Respondent Brief filed December 4, 2013 (“3PR Resp. Br.”); (7) the Examiner’s Answer mailed January 30, 2014 (incorporating portions of the RAN by reference) (“Ans.”); (8) Requester’s Rebuttal Brief filed February 28, 2014 (“3PR Reb. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 4 Cross Appellant, Superior Communications, Inc. (“Requester”), urges that the Examiner’s decision rejecting these claims should be affirmed. See 3PR Resp. Br. Requester also cross appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s failure to reject claims 1, 2, 6, 7-9, 10, 11, 16, 17, 20, 21, 24-27, 33-37, and 56-58 over proposed prior art. See 3PR App. Br. 6; 3PR Reb. Br. Owner urges that the Examiner’s decision to not reject these claims should be affirmed. See PO Resp. Br. Two additional pending appeals to the Patent Trial and Appeal Board (“the Board”) by Owner, as well as the associated cross appeals by Requester, which arise from separate inter partes reexaminations, are related to the present appeal. Appeal 2014-007812 in inter partes reexamination 95/002,374 arose from a request by Superior Communications for an inter partes reexamination of US Patent 8,242,359 B2, also titled “ENERGY- SAVING POWER ADAPTER/CHARGER” (issued to Valerie L. McGinley et al. on Aug. 14, 2012 from Application 13/053,007, filed Mar. 21, 2011; which is a continuation of the ’833 Patent) (“the ’359 Patent”). Appeal 2014-006493 in inter partes reexamination 95/002,378 arose from a request by Superior Communications for an inter partes reexamination of Br.”); (9) the § 131 Declaration of Mr. James McGinley dated January 24, 2013 (“the first ’833 McGinley Decl.”); (10) the § 131 Declaration of Mr. James McGinley dated June 3, 2013 (“the second ’833 McGinley Decl.”); (11) the § 132 Declaration of Dr. John M. Tobias dated June 3, 2013 (“the ’833 Tobias Decl.”); and (12) the § 132 Declaration of Dr. William Milton Gosney dated July 3, 2013 (“the ’833 Gosney Decl.”). The noted McGinley, Tobias, and Gosney Declarations are to be distinguished from the Declarations filed in the related re-examinations of the ’359 Patent and the ’648 Patent. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 5 US Patent 7,960,648 B2, titled “ENERGY SAVING CABLE ASSEMBLIES” (issued to James W. McGinley et al. on June 14, 2011 from Application 12/251,882, filed Oct. 15, 2008; which is a continuation- in-part application ultimately claiming priority to the ’833 Patent) (“the ’648 Patent”). Various claim-interpretation issues and prior-art interpretation issues are common among the present appeal and the two related appeals. PO App. Br. 1. The details of the two related appeals and cross appeals are addressed in separate Opinions. Patent infringement litigation involving Owner, Requester, and the patents involved in the three related reexaminations has been dismissed without prejudice subject to Appellant’s right to reinstate the litigation retroactively after the completion of reexamination. PO App. Br. 1; PTAB Appeal 2014-007812, PO App. Br. 1 (filed Nov. 4, 2013); and PTAB Appeal 2014-006493, PO App. Br. 1 (filed Nov. 4, 2013). Oral arguments for all three related appeals and associated cross appeals were held consecutively before a panel of the Board on August 13, 2014. Transcripts of the respective appeals’ arguments (“the ’7294 Tr.,” “the ’7812 Tr.,” and “the ’6493 Tr.”) are included in the respective records. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We affirm-in-part. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 6 Pursuant to our authority under 37 C.F.R. § 41.77(a), we enter two new grounds of rejection, summarily rejecting claims 1, 2, 6, and 10 as anticipated by Tracy (see BI–16), and claims 7-9 and 56-68 as obvious over Tracy in view of Kubo (see BI–16). STATEMENT OF THE REJECTIONS Claims 1-58 are subject to reexamination. 3PR App. Br. 2. Claims 1- 23 and 56-58 stand rejected. Id. at 3. Claims 24-27 and 33-37 remain allowed. Id. Claims 28-32 and 38-55 have been canceled. Id. at 2. Owner appeals the following Bases of Invalidity (“BI”) of claims 1-23 and 56-58, which the Examiner adopted (PO App. Br. 4-35): BI–1. Claims 11, 14 and 20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Yang (WO 2007/027063 A1; published Mar. 8, 2007). BI–2. Claims 1, 4-6, 10, 12, and 21-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Odaohhara (US 6,986,067 B2; issued Jan. 10, 2006). BI–3. Claims 7-9 and 56-58 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Odaohhara and Kubo (US 6,671,814 B1; issued Dec. 30, 2003). BI–4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Odaohhara and Ray (EP 1513255 A2; published Mar. 9, 2005). BI–5. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Dettweiler (US 2005/0041360 A1; published Feb. 24, 2005). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 7 BI–6. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Nguyen (US 2005/0237036 A1; published Oct. 27, 2005). BI–7. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Suzuki (US 6,489,725 B1; issued Dec. 3, 2002). BI–13. Claims 1, 4-6, and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bhogal (US 2007/0300089 A1; published Dec. 27, 2007) in view of Odaohhara. BI–14. Claims 7-9 and 56-58 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bhogal in view of Odaohhara and Kubo. BI–18. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Menas (US 2006/0202557 A1; published Sep. 14, 2006). BI–20. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Suzuki. Requester appeals from Examiner's decision to not adopt the following Bases of Invalidity, which Requester had proposed during the reexamination proceeding in relation to claims 1, 2, 6, 7-9, 10, 11, 16, 17, 20, 21, 24-27, 33-37 and 56-58 (3PR App. Br. 6-7): BI–11. Claims 1, 11, 20 and 21 are asserted to be anticipated under 35 U.S.C. § 102(e) by Bȧgenholm (US 7,923,869 B2; issued Apr. 12, 2011). BI–12. Claims 1, 2, 6, 11, 16 and 17 are asserted to be obvious under 35 U.S.C. § 103(a) over Darby (WO 2008/062174 A2; published May 29, 2008) in view of Menas. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 8 BI–16. Claims 1, 2, 6 and 10 are asserted to be anticipated under 35 U.S.C. § 102(e) by Tracy (US 2009/0027922 A1; published Jan. 29, 2009). BI–17. Claims 7-9 and 56-58 are asserted to be obvious under 35 U.S.C. § 103(a) over Tracy in view of Kubo. BI–21. Claims 24, 26, 33, 34 and 37 are asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima (US 6,316,844 B1; issued Nov. 13, 2001). BI–22. Claim 25 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Dettweiler. BI–23. Claim 27 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Suzuki. BI–24. Claim 35 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Kim (US 6,509,658 B1; issued Jan. 21, 2003). BI–25. Claim 36 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima in view of Kalin (US 5,760,491; issued June 2, 1998). BI–26. Claim 33 is asserted to be anticipated under 35 U.S.C. § 102(b) by Yang. BI–27. Claim 33 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of admitted prior art. BI–28. Claims 33-35 are asserted to be obvious under 35 U.S.C. § 103(a) over Watanabe (JP HEI 4[1992]-165957; published June 11, 1992) in view of Hoeyer (EP 1473813 B1; published Mar. 16, 2005). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 9 We first address Owner’s appeal of the adopted rejections. We then turn to Requester’s cross appeal of the non-adopted rejections. ADOPTED BI–1, BI–5 THROUGH BI–7, AND BI–20: YANG ALONE OR IN COMBINATION WITH DETTWEILER, NGUYEN, OR SUZUKI Summary Bases of Invalidity 1, 5-7, and 20 are all directed either to independent claim 11 or to various claims that ultimately depend from claim 11. As set forth supra, independent claim 11 includes the limitation “circuitry for converting the input power voltage to the output power voltage and for determining an ‘off’ state of the circuitry.” For the reasons explained infra, we find the Examiner’s interpretation of the claim term “converting” to be unreasonably broad. As such, we do not sustain the rejections associated with these Bases of Invalidity. Arguments and Contentions The Examiner finds that independent claim 11, as well as dependent claims 14 and 20, is anticipated by Yang. BI–1, supra. Yang is directed to an electric socket that includes power saving circuitry, the circuitry controls the electrical supply or automatically interrupts power to a connected electronic apparatus. Yang, Abstract. Yang differs from Owner’s invention in that Yang is directed to an AC plug for an AC appliance (e.g., Yang, ¶ 2 (discussing plugs for a television, computer, electronic range, or an audio system)), whereas Owner discloses a charger that plugs into an AC outlet and converts AC voltage to DC voltage in order to power a DC electronic device, such as a cellular phone (e.g., ’833 Patent, Background and Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 10 Summary sections). The Examiner nonetheless finds that the stated claims are anticipated by Yang because the claim 11 limitation “circuitry for converting the input power voltage to the output power voltage” is so broad as to read on Yang’s “noise removing unit 100.” RAN 6 (incorporating the reasoning of the Request 16-27). Owner contends that this finding should be reversed for two primary reasons. PO App. Br. 14. The first reason is dispositive for the purposes of this appeal: “Noise removing circuit 100 is illustrated as only a capacitor which persons of ordinary skill in the art understand will filter out signals at certain frequencies. The voltage at each side of noise removing unit 100 is the same. There is no ‘conversion’ mentioned.” Id. Owner provides expert testimony evidence to support the position that one of ordinary skill in the art would not have interpreted Yang’s capacitive filter as corresponding to a voltage converter. See ’833 Tobias Decl. ¶¶ 14, 15. In his Declaration, Dr. Tobias states inter alia that the ’833 Patent uses the claim term “converting” in the following context: The ‘833 Patent provides that “[t]ypically, the power device is a combination of a charger and a power adapter so that alternating current with an input voltage is received and converted to direct current, and the voltage is stepped down to an output voltage . . . .” ‘833 patent, col. 1, ll. 24-27 (distinguishing between conversion and stepping). Tobias ’833 Decl. ¶ 14. Dr. Tobias further testifies that one of ordinary skill would not have interpreted Yang’s capacitive AC filter as corresponding to a voltage Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 11 converter because it does not change the voltage between the wall and the appliance. [N]o reasonable person of ordinary skill in the art would agree with the third party requestor’s position, as adopted in the ACP (see page 24), that Yang’s power circuitry “converts” input voltage to an output voltage by the use of an AC Capacitor. Yang [60]. The input voltage at both Power Input End 10 and Power Output End 90 are the same since capacitor filtering works in both directions from its connection point between the input and output. Input voltage is defined at the input terminals of the device and the output voltage is defined at the output terminals of the device. The voltage and noise are the same at Power Input 10, Switch Unit 50 when closed, and Power Output 90. Id. Requester disputes Owner’s contention that the claim language “converting the input power voltage to the output power voltage” requires interpreting conversion narrowly to mean “converting to a DC output.” 3PR Resp. Br. 3. Requester more specifically contends that Owner is trying to distinguish the ’833 claims over the prior art by “improperly importing limitations from the ‘833 Patent’s specification into [the] claims.” Id. Requester maintains that the term “DC” is not found in the claims and that the Specification does not provide an express definition for converting. Id. Requester maintains that the Background section of the ’833 Patent only “uses the word ‘convert’ in an exemplary manner when discussing that certain chargers convert from AC to DC.” 3PR Resp. Br. 3 (citing ’833 Patent, col. 1, ll. 22-26). Requester further contends Patent Owner’s proposed construction would render claim limitations superfluous because other claims specifically limit Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 12 conversion to produce DC output voltage. Claim 56 of the ‘833 Patent recites “converting the input voltage to DC output voltage.” If “converting” necessarily resulted in a DC output, then the limitation in claim 56 of a DC output would be a meaningless limitation. 3PR Resp. Br. 4 (citation omitted). See also the ’7812 Tr. 23 (wherein Requester argues that dependent claim 7 of the ’359 expressly recites that the circuitry comprises an AC portion and a DC portion, thereby requiring that the term “converting” as used in claim 1 of the ’359 Patent, as well as the present patent, to be broader than AC/DC converting). Requester maintains that instead, “[t]he term ‘converting,’ when referring to voltage, has a broad meaning in the field including manipulation of a voltage’s phase, frequency, amplitude, noise level and other forms of filtering.” 3PR Resp. Br. 3-4 (citing the ’833 Gosney Decl. ¶ 17). A relevant excerpt of this Declaration reads as follows: 16. The Patent Owner and Dr. Tobias allege, regarding the power circuitry limitation that “[t]he input voltage at both Power Input End 10 and Power Output End 90 are the same since capacitor filtering works in both directions from its connection point between the input and output” (Response at pg. 5; Tobias Decl. ¶ 14). However, I disagree and find that the Patent Owner and Dr. Tobias have misinterpreted the circuit shown in Yang’s Figure 5. Upon my review, I find that Yang’s circuit includes a capacitor C10 that serves as a “low-pass filter” that will result in a different voltage at the power input end 10 and the power output end 90 by removing noise from the power input into end 10. A “low- pass filter” is well known to convert an input voltage to a different output voltage to reduce noise – that is the purpose of the filter. I also find that the capacitor filtering works in both directions to allow the capacitor C10 to remove noise input from the connected electronic device through Yang’s power Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 13 output end 90, as well as noise input from the wall power source through Yang’s power input end 10. 17. I find that the term “power circuitry” is not used in the specification of the ‘833 Patent. I also find that conversions of power are broadly described in the ‘833 Patent to include a conversion to DC output as well as conversions to different voltage levels. I find that terms like “power circuitry,” “circuitry” and “converting voltage” have broad meanings in the field that include manipulation of a voltage’s phase, frequency, amplitude, noise level and other forms of filtering. I also find that Yang states the noise removing unit 100 “particularly includes an AC capacitor C10,” which indicates that the noise removing processes of the unit 100 includes the AC capacitor C10, but are not limited solely to use of the capacitor C10. Accordingly, the noise removing unit 100 using the “low-pass filter” would provide a teaching of the “power circuitry” limitation. ’833 Gosney Decl. ¶¶ 16–17. Issue May Yang’s noise removing unit 100 be reasonably interpreted as corresponding to “circuitry for converting the input power voltage to the output power voltage,” as recited in independent claim 11? Analysis During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the “ordinary” and the “customary” meaning of the terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). “[I]nterpreting what is meant Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 14 by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). In the present set of three related patents, Owner uses “convert,” albeit in an inconsistent manner, so as to have a limited meaning. The Specification of the related ’648 continuation-in-part Patent initially sets forth “[a]s used herein, the term ‘charger’ refers to devices that provide a step in power (i.e., step power from an input voltage to an output voltage), convert power (i.e., convert input alternating current (AC) to output direct current (DC) or both.” ’648 Patent, col. 1, ll. 33-37. This statement in isolation would be sufficient to clarify that “converting” power is distinguished from “stepping” power. That is, the use of “i.e.” would be sufficient to clarify that “convert[ing] power” is limited to AC to DC conversion, ruling out both DC to AC conversion and DC to DC voltage stepping. See Edward Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (noting that the term “i.e.” in the Specification signals an intent to define the word to which it refers). The present ’833 Patent also describes the invention in a manner that suggests that only AC to DC converter chargers were envisioned. For example, the Specification of the ’833 Patent states “[i]n order to be a true ‘zero-energy’ device, the power input (i.e., AC input) to the power device must be cut.” ’833 Patent, col. 2, ll. 53-54. If other types of converter devices were envisioned, it would have been appropriate to use “e.g.” to reference the AC power input. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 15 However, the ’648 Patent Specification additionally includes a different usage: “The charger 100 includes converter circuitry 106 for converting input power received at the inputs 102, 104 into output power, typically AC to DC conversion, if necessary, and step-down conversion to reduce the voltage.” ’648 Patent, col. 8, ll. 26-30 (emphasis added). This conflicting usage renders it less than completely clear whether Owner intends for conversion to be limited solely to AC to DC conversion, or whether Owner intends for “conversion” to also include DC to DC voltage stepping. The present ’833 Patent’s Specification provides further guidance: Towards [the end of providing a detachable power device for charging electronic devices], the power device 10 includes electronic circuitry 30, discussed below and shown in FIG. 8, for altering input power from the receptacle at the prongs 14 to output power delivered to the electronic device 20. The circuitry 30 is generally located within a housing 32 preferably positioned proximate to the first end 12. For instance, the power device 10 may receive 120 VAC at the prongs 14 and, after conversion and stepping, delivers 5 VDC from the ground G and current output D, discussed below. ’833 Patent, col. 7, ll. 3-12 (emphasis added). That is, this passage uses “altering” as a generic term to broadly describe any possible change that can be made to the input power. The passage then sets forth a specific example of how the input power may be altered—by “conversion and stepping.” This contrasting usage indicates that the word “conversion,” or “converting” as is used in claim 11, is not intended to have a broad meaning that includes any possible change. Such a broad interpretation would conflate the meaning of the more general term Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 16 “alter” with that of the more specific term “convert.” This passage instead makes reasonably clear that “convert” is narrower than “alter.” Furthermore, during the oral hearings for the present appeal, Counsel for Owner made further statements regarding the meaning of “converting.” More specifically, when asked “[w]hat else would be encompassed within ‘the input power voltage to an output power voltage,’ other than converting AC-to-DC,” Counsel responded “[n]othing in the context of the claim because the portable rechargeable electronic device, which is a limitation to the preamble of all the claims on appeal in this patent, I am not aware of the disclosure of any portable rechargeable electronic device that operates on AC.” ’7294 Tr. 41-42. Counsel for Owner additionally urged that his statements regarding the meaning of “convert,” constitute prosecution history estoppel. Id. 40-41. Regardless, then, of the noted usage inconsistencies that exist internally within the Specification of the ’648 CIP Patent, Owner’s statements, when interpreted as a whole, are at least sufficient to dispose of the issue before us on appeal. That is, assuming arguendo that Yang’s capacitor does in fact affect the input voltage of Yang’s circuit to some degree (e.g., by somehow filtering out noise or smoothing the incoming voltage), it is reasonable to interpret Yang’s capacitor as merely altering the circuit’s performance. In contrast, it is not reasonable to interpret the capacitor as more specifically converting the circuit’s power or voltage, at least not in accordance with the Owner’s usage of the term “convert.” Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 17 We recognize that Dr. Gosney expresses the opinion that “terms like ‘power circuitry,’ ‘circuitry’ and ‘converting voltage’ have broad meanings in the field that include manipulation of a voltage’s phase, frequency, amplitude, noise level and other forms of filtering.” ’833 Gosney Decl. ¶ 17. However, the relevant question is not what the collection of distinct “terms like “power circuitry” and “converting voltage” may cover when taken in combination. The relevant inquiry is what the single term “converting voltage” means in the present context. The ’833 Gosney Declaration does not unambiguously set forth that the term “converting voltage” itself includes all of the proposed meanings recited. Moreover, even if we were to understand Dr. Gosney to be stating that he finds each individual one of the listed terms—particularly the term “converting voltages” alone—has meanings that include manipulation of a voltage’s phase, frequency, amplitude, noise level and other forms of filtering, our conclusion would be the same. Requester’s briefs contain insufficient evidence to corroborate Dr. Gosney’s findings. If filtering and other manipulations of a voltage’s phase, frequency, amplitude, and noise level alterations were, as urged by Dr. Gosney, commonly referred to as voltage “conversions,” it would not seem to be an unreasonable burden for Requester to provide actual examples of such usage. Furthermore, the art of record does not support the interpretation urged by Dr. Gosney. For example, Yang, itself, uses “converting” in relation to converting AC voltage to DC voltage. See Yang ¶ 68-75 (setting forth a converting unit 63 of load current detector 60 that converts AC to DC voltage). Yang does not use the term “convert” in relation to the noise removing unit 1—or its Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 18 capacitor. See also Bhogal ¶ 0012 (describing enhanced Power Supply 200 as “an AC to DC converter plugged into power outlet 105”). An additional factor weighs against the persuasiveness of Dr. Gosney’s findings. Owner’s expert, Dr. Tobias, conversely avers that “[n]o reasonable person of ordinary skill in the art would claim conversion of the input voltage to an output voltage occurs in the circuit described by Yang.” ’833 Tobias Decl. ¶ 14. As such, Owner’s expert testimony effectively counters Requester’s expert testimony on this point. We next note that Requester’s broad interpretation of “converting” effectively renders various terms of independent claim 11 superfluous. That is, if the filtering effect of a circuit capacitor could be reasonably interpreted as “converting” the input voltage, it would seem that any alteration to a circuit’s voltage could be reasonably interpreted as “converting the input voltage.” However, every resistor, inductor, or capacitor contained within virtually any circuit will necessarily have some effect on that circuit’s voltage. As such, under Requester’s interpretation, there would be no need for claim 11 to recite “circuitry for converting the input power voltage to the output power voltage.” It would be sufficient to merely recite “circuitry” because the clause “for converting the input power voltage to the output power voltage” would be superfluous. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005). We are likewise unpersuaded by Requester’s claim differentiation argument that “[i]f ‘converting’ necessarily resulted in a DC output, then the Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 19 limitation in claim 56 of a DC output would be a meaningless limitation.” 3PR Resp. Br. 4. It is true that claim 56 recites “converter circuitry for converting the input voltage into DC output voltage.” However, this does not mean that Owner’s interpretation would render the respective limitations of claim 11 and 56 substantively identical in scope. Claim 11 is, at least theoretically, broad enough to read on a power device that converts DC input power voltage into AC output power voltage. Such a hypothetical device could be useful for providing power to a portable rechargeable electronic device that, in turn, possesses its own AC to DC converter. Requester may well be correct that dependent claim 7 of the ’359 continuation Patent—by narrowing independent claim 1 so as to specifically set forth that the power circuitry comprises an AC portion and a DC portion—does run afoul of the claim-differentiation doctrine. ’7812 Tr. 23. However, the claim-differentiation doctrine is merely a canon of claim construction that is used as a tool to aid readers in interpreting claims. It is not, itself, a binding requirement. Furthermore, we have already recognized supra that some ambiguity does remain in determining exactly how narrow converting should be interpreted (e.g., whether “converting” include DC to DC voltage stepping). The limited question before us, though, is whether the term “converting” is so broad that it also reasonably reads on Yang’s capacitive filter. At oral argument, Counsel for Requester was questioned about the ’833 Patent Specification’s distinction between “altering” and “converting.” ’7294 Tr. 30-31. Counsel for Requester urges that this passage is not dispositive of the proper construction for independent claim 11 because this Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 20 passage of the Specification is directed to altering input power, whereas claim 11 recites converting the input power voltage—not simply the input power. ’7294 Trans. 32. This argument is also unpersuasive. Requester has not adequately explained why it would be reasonable to attribute a relatively broader meaning to “convert” in the context of claim 11’s recitation of “converting the input power voltage” than in the context of the Specification’s more simple disclosure of converting input power. Instead, it seems reasonable to the Panel that the meaning of “convert” should be uniform regardless of whether referring to power voltage or simply power. This is particularly true in light of the fact that power and voltage are closely related: power is the product of voltage and current (or P=V*I). Conclusions For the purposes of the present rejections, we need not decide whether the claim term “converting” is exclusively limited to converting AC to DC power, or whether the term may additionally read on DC to DC conversion (voltage stepping) or even DC to AC conversion. Those questions are not before us. We instead limit ourselves to addressing the question of whether Yang’s capacitive filter may be reasonably interpreted as “converting electrical power voltage,” as recited by independent claim 11. For the foregoing reasons, then, Owner has persuaded us that the Examiner failed to establish that Yang discloses “circuitry for converting the input power voltage to the output power voltage,” as recited by independent claim 11. Accordingly, we do not sustain the anticipation rejection as set forth in BI–1—the anticipation rejection of independent claim 11, and claims 14 and 20, which depend from claim 11. We likewise do not sustain any of the Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 21 following adopted rejections, which are also based upon the theory that Yang discloses “circuitry for converting the input power voltage to the output power voltage” (see RAN 7, 9 (adopting the following proposed Bases of Invalidity); see also the Request for Inter Partes Reexamination 16- 27, 119-20, 122-24 (filed Sept. 14, 2012)): BI–5. Claims 15 and 16, which are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Dettweiler; BI–6. Claim 17, which is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Nguyen; BI–7. Claim 18, which is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Suzuki; and BI–20. Claim 19, which is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Suzuki. ADOPTED BI–2 THROUGH BI–4: YANG IN COMBINATION WITH ODAOHHARA, ALONE AND FURTHER IN VIEW OF KUBO OR RAY Contentions and Arguments The Examiner finds that even if Yang’s capacitor may not be reasonably interpreted as corresponding to a converter, claims 1, 4-6, 10, 12, and 21-23 are nonetheless rendered obvious by the combination of Yang and Odaohhara. RAN 6 (incorporating the reasoning of Request 54-72). Specifically, the adopted reasoning of the Request sets forth that “Odaohhara discloses an AC/DC converting power device 10 that produces a DC output in order to allow the power device to switch operating frequencies.” Request 57. The Request posits that “[i]t would have been obvious to one Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 22 having ordinary skill in the art to modify the power device of Yang with the DC converter of Odaohhara to allow for a variety of operating frequencies as suggested by Odaohhara.” Id. (citing Odaohhara, col. 2, ll. 58-67). Owner argues that the rejection fails to explain where in Yang Odaohhara’s AC/DC converter would be inserted. PO App. Br. 18. Owner argues that the combination renders Yang inoperable for its intended purpose of providing power to AC devices. Id. at 19. Owner additionally argues that “[i]t is improper to base a rejection on a mere assertion of what could be done without explaining the impact (or lack of impact) the proposed modification would have on the operation of the circuit in the primary reference. Id. Owner urges that the rejection is improper because “BI–2 merely finds an AC/DC converter in the prior art and concludes that such a converter may be used anywhere, in any circuit, without regard to the other aspects of the operation of that circuit.” Id. at 20. According to Owner, the combination is based, instead, on impermissible hindsight. Id. at 19. Analysis Even if we were to accept Requester’s clarification that Odaohhara’s AC/DC circuitry could be inserted in place of Yang’s noise removing unit 100 (3PR Resp. Br. 15), the Examiner still has not established sufficiently that one of ordinary skill would have found it obvious to combine Yang and Odaohhara in such a manner. Yang is directed to an electric socket for supply power to one or more connected devices that operate on AC power. Yang, e.g., Abstract; ¶ 2. Yang’s socket monitors the power usage so that when an AC device has not been used for some period of time, power is Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 23 automatically interrupted so as to avoid undesired standby power consumption. Yang, Abstract. In contrast, Odaohhara provides circuitry within an AC to DC power supply that reduces power loss by lowering the power supply’s operating frequency when the powered device is not drawing full load. Odaohhara, e.g., Abstract. That is, while Yang and Odaohhara both address the general problem of reducing phantom load, the two inventions address this problem for different types of devices in differing manners. The adopted basis of invalidity does not provide sufficient reasoning for why one of ordinary skill would have wanted to modify Yang’s device, which already saves power by selectively switching open the AC circuit, by adding frequency-reducing circuitry. Absent articulated reasoning that is supported by some rational underpinning to support the legal conclusion of obviousness (See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)), the proposed combination appears to be nothing more than a hindsight reconstruction that impermissibly uses the present invention as a roadmap. Conclusion For the foregoing reason, we do not sustain the obviousness rejection of claims 1, 4-6, 10, 12, and 21-23 over Yang in view of Odaohhara, as set forth in BI–2. We likewise do not sustain either of the two following adopted rejections, which are likewise based upon the theory that it would have been obvious to incorporate the circuitry of Odaohhara into Yang’s adaptor (see RAN 7, 9 (adopting the reasoning of Request 64, 99-16, 117, and 118): Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 24 BI–3: Claims 7-9 and 56-58, which are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Odaohhara and Kubo. BI–4: Claim 13, which is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yang in view of Odaohhara and Ray. ADOPTED BI–13: BHOGAL IN VIEW OF ODAOHHARA AND ADOPTED BI–14: BHOGAL IN VIEW OF ODAOHHARA AND KUBO Contentions and Arguments The Examiner finds that Bhogal discloses all of the limitations of claims 1, 4-6, and 10 except for the claimed switch assembly having a member movable to and between first and second positions. RAN 8 (citing Request 183-187). The Examiner finds that Odaohhara discloses a sheath 7 that reads on such a switch and finds that it would have been obvious “to modify the switch assembly member of Bhogal to provide a member movable to and between first and second positions, as suggested by Odaohhara.” Id. (citing Request 187). Owner argues inter alia that [t]he last clause of claim 1 refers to a movable switch assembly “corresponding to respective ‘on’ and ‘off’ states of the power device” . . . .” and the power device draws no input power in the ‘off’ state.” (Emphasis added) Bhogal does not disclose a switch but rather a Switching Logic Component 300 [0013] illustrated in detail (Fig. 3) as including a microprocessor, electronic switches and any necessary signal converters . . . . [00l3] (Emphasis added). But a microprocessor cannot shut off power to the primary side of the transformer 230 in the absence of a “hard switch” between plug prongs 220 and transformer 230. [Tobias ¶¶ 38-41] PO App. Br. 29. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 25 Owner urges that Bhogal must be interpreted as merely disclosing that AC power is only shut off from the transformer’s secondary side, but that there is no reasonable basis to conclude that input AC power is shut off from the transformer’s primary side. Id. Because the primary side continues to draw power in the off state, Owner continues, one cannot reasonably conclude that the power device draws no power in the off state. Id. at 29-30. Owner additionally argues that the further teachings of Odaohhara fail to cure this deficiency. Id. at 30-31. Requester argues that Bhogal clearly discloses that the “Switching Logic Component 300 shuts off the AC transformer and uses local battery 260 to supply DC power (340).” 3PR Resp. Br. 19 (citing Bhogal, ¶ 18). Requester further argues that Bhogal’s disclosure of shutting off the AC transformer achieves the “desired result of a power supply that ‘automatically eliminates standby power load so that no AC power is drawn when the attached device is turned off.’” Id. at 20 (citing Bhogal, ¶ 6). Requester urges that this shutdown state is distinguishable from the result achieved by other power supplies that only “reduce the standby power load, but do not totally eliminate the standby power load.” Id. (citing Bhogal ¶ 0005; also citing the ’833 Gosney Decl. ¶ 46). Issue The dispositive issue regarding BI–13 is whether the Examiner has established that Bhogal’s power supply draws no input power when in the “off” state. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 26 Analysis “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). Accordingly, we first determine what independent claim1 means by reciting that “the power device draws no input power in the ‘off’ state.’” The ’833 Patent’s Specification provides an objective standard for what constitutes “no input power.” The Specification explains that when the power is cut, “the power draw is zero or negligible (i.e., measured in microwatts).” ’833 Patent, col. 6, ll. 49-50. In order for Bhogal to be said to disclose that there is no input power when in the “off” state, Bhogal, then, must disclose that the enhanced power supply 200 draws power in the “off” state that is only on the order of microwatts. See Edward Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (noting that the term “i.e.” in the Specification signals an intent to define the word to which it refers). As noted supra, Owner contends that because Bhogal depicts the “off” state being achieved by cutting power by means of opening the circuit on the secondary side of the transformer 230, some phantom input power greater than microwatts necessarily will still be drawn by the transformer’s primary side. Requester acknowledges that Bhogal’s figures do not depict a switch disposed between the AC input and the primary windings of transformer 230. See the ’833 Gosney Decl. ¶ 47: Bhogal does not refer to Figure 2 as a circuit diagram. I find that many features of Bhogal are excluded. For example, the transformer 230 is described to “convert[] 110V 60Hrz AC power into DC power;” although the exact position and relationship of the primary and secondary transformer coils and Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 27 any AC/DC conversion circuitry is not shown (see Bhogal at para. 0013). In addition, the Switching Logic Component 300 is not only a microprocessor, but also includes “electronic switches” and “any necessary signal converters.” I do not see the position and relationship of these components in Figure 2. Based on Figure 2 alone, it is possible that power could come in from the plug, pass to the Switching Logic Component 300, and then pass to transformer coils or AC/DC conversion circuitry. I thus refer to the specification of Bhogal. ’833 Gosney Decl. ¶ 47 (emphasis added). Requester also does not offer any evidence that, when power is cut on the transformer’s secondary side, it is possible to limit the input power draw on the primary side to zero power as defined by the ’833 Specification (i.e., to microwatts). See 3PR Resp. Br. 19-22. Instead, Requester argues that the written portion of Bhogal does, in fact, disclose totally eliminating standby power load, and thereby inherently discloses “total elimination of input power.” Id. at 21. It is not completely clear, then, whether Requester is arguing that because Bhogal discloses that input power is totally eliminated, (1) Bhogal’s switching logic component 300 must necessarily open the circuit on the primary side of the transformer; or (2) the input power would be zero regardless of whether the circuit is open on the primary or secondary side of the transformer. We address both of these possible positions. Addressing the first position, Bhogal does not contain sufficient disclosure to reasonably conclude that the switching logic component 300 inherently or implicitly opens the circuit on the primary side of the transformer 230. Even Requester’s expert witness acknowledges that such a conclusion reasonably cannot be reached by viewing the drawings. Gosney Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 28 ’833 Decl. ¶ 47. According to Dr. Gosney, at best, Figure 2 might indicate that such a configuration is merely “possible,” and Bhogal’s written Specification has to be relied upon in order to reach such a conclusion. Id. A review of Bhogal’s written Specification, though, does not provide sufficient evidence of where the circuit is cut either. Requester is correct that Bhogal does set forth a stated goal of “eliminat[ing] standby power load so that no AC power is drawn when the attached device is turned off.” Bhogal, ¶ 0006. However, Bhogal does not provide any objective standards for determining how much power is drawn in the “off” state. That is, unlike the objective standard of microwatts that is set forth in the ’833 Patent, Bhogal does not define how limited the power must be to constitute “no power.” Read as a whole then, Bhogal’s written Specification, at best, merely indicates the transformer may be turned off. But the Specification does not sufficiently indicate whether the transformer is turned off by opening the circuit on the primary side, as opposed to the secondary side, of the transformer: “Standby mode occurs when transformer 230 is turned off and DC power is supplied by local battery 260.” Bhogal, ¶ 0018. “If target device 115 is not connected to enhanced power supply 200, then Switching Logic Component 300 stops supplying DC power through connector 205 (322).” Bhogal, ¶ 0016. For as long as enhanced power supply 200 is plugged in or has AC power available (342), Switching Logic Component 300 will loop through steps (316-340) detecting the power requirements of target device 115, and switching between steady state and standby modes. Whenever the AC power is no longer supplied, Switching Logic Component 300 will shut Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 29 down communication with target device 115 via control contact 280 and cable 215 (344) and stop (346). Bhogal, ¶ 0019. Control contact 280 via cable 215 facilitate[s] communication between target device 115 and Switching Logic Component 300. Control contact 280 in its simplest form is an open circuit with a switch that closes when physically connected with target device 115. The closed circuit indicates that enhanced power supply 200 is attached to target device 115. Other embodiments of control contact 280 allow target device 115 to electronically communicate with Switching Logic Component 300, to signal for increased or decreased power and to turn enhanced power supply 200 on or off. Bhogal, ¶ 0013. Turning to the second position, the evidence of record indicates that opening the circuit on the secondary side of the transformer will not completely eliminate phantom load. For example, Owner’s expert witness cites to Kalin as evidence that opening the circuit on the secondary will not cause Bhogal’s enhanced power supply to draw no power in the “off” state. ’833 Tobias Decl. ¶ 40 (observing “[a]s Kalin points out ‘The transformers even without any load current being drawn off the secondary, become warm . . . .’ Kalin, col. 1, ll. 37-39.”). Conclusion For the foregoing reason, Bhogal has not been shown to sufficiently disclose that when in the ‘off’ state, Bhogal’s power supply draws “zero” power—power on the order of microwatts or less. Accordingly, we do not sustain the obviousness rejection of claims 1, 4-6, and 10 over Bhogal in view of Odaohhara, as set forth in BI–13. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 30 Regarding BI–14, claims 7-9 depend from claim 1, and claims 56-58 likewise require that “the power device draws no input power in the ‘off’ state.” Kubo is not relied upon to cure the deficiency relating to this limitation that is noted above. RAN 8 (citing Request 205). For the reasons noted supra, then, we likewise do not sustain the obviousness rejection of claims 7-9 and 56-58 over Bhogal in view of Odaohhara and Kubo. ADOPTED BI–18: MENAS Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Menas’s power strip (or “power system 102”). The rejection is based, in relevant part, on interpreting Menas’s automatic sensing (AS) DC receptacles 144, 146, and 148 as corresponding to the claimed “connector located on the second portion and removably connectable with the electronic device.” Request 246. The Examiner finds that Menas’s main power control indicator 156/1008 corresponds to the claimed switch assembly having a movable member. Request 247-248. Owner argues While one end of a power strip may be “removably connectable” to the wall socket, and while the devices to be powered may, in turn, be “removably connectable” to the power strip, the static receptacles themselves are not both the “second portion” of the power device (as claimed) and the “connector” (as claimed). PO App. Br. 33-34. Owner further argues that because DC receptacles 133, 136, and 148 are static receptacles, “they are not ‘removably connectable’ to anything and therefore cannot meet the third clause of [claim 1].” PO App. Br. 33. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 31 Owner may well be correct that it would be improper to interpret any of Menas’s DC receptacles as simultaneously constituting two separate elements of the claim (i.e., the second portion of a power device and alternatively the distinct connector that is located on the second portion). However, we understand the rejection (see Request 246) to intend to set forth that any one of the DC receptacles themselves corresponds to the claimed connector. 3PR Resp. Br. 25. The distinctly claimed second portion alternatively corresponds to, inter alia, the portion of Menas’s power system on which the connectors 144, 146, 148 are positioned. Id. 2 We now turn to the question of whether a receptacle may be deemed to be an element that is “removably connectable.” We see no reason why a female connector (e.g., a receptacle or socket) should be deemed to be any less “removably connectable” than a male connector (e.g., a plug.) We also see no reason why a power cord, independent from both the power supply and the electronic device being powered, that communicates power from one of the DC receptacles to an electronic device (e.g., a cell phone) cannot itself also be deemed to constitute an electronic device. Furthermore, even if we were to assume solely for the sake of argument that an independent power cord, itself, cannot reasonably be interpreted to constitute an electronic device, the fact that such an independent power cord may be needed to communicate power from one of Menas’s DC receptacles to an electronic device (e.g., a cell phone) does negate the fact that DC receptacle and the 2 To the extent that the rejection may be alternatively interpreted to be mapping Menas’s DC receptacles to both the second portion and to the connector, we find this ambiguity in the rejection’s rationale to constitute harmless error. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 32 electronic device would still be “removably connectable. As noted by Requester (3PR Resp. Br. 24-25), claim 1 does not recite that the removable connection for the connector and electronic device is a direct physical connection. The claim is broad enough to read on an indirect electrical connection. We now turn to Owner’s arguments relating to the claimed switch assembly. Owner first argues that elements 156 and 1008 are separate elements and that it is unclear whether the rejection maps the claimed switch to element 156, element 158, both 156 and 158, or element 1008. PO App. Br. 34. This argument is unpersuasive. It is reasonably clear that the rejection treats elements 156 and 1008 as both designating Menas’s main power control indicator, albeit in different embodiments of the same element. Request 247. That, is, the rejection maps Menas’s power control indicator to the claimed switch assembly. Owner argues that Element 156 is nothing more than a surge protector or fuse, ostensibly intended to prevent power from reaching the devices plugged into element 104, e.g., at receptacles or outlets 144, 146, 148. What is missing from the disclosure of Menas is any explanation that upon tripping the fuse or surge protector 156, [the line chord device] 104 ceases to draw any power from the wall. Merely preventing power from reaching the DC outlets 144, 146, 148 does not mean that the device 104 stops drawing power. The internal circuitry is not disclosed. PO App. Br. 34-35. Owner further argues that element 1008 is a different switch that is external to the AS power supply 102. Id. at 34. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 33 These arguments are not persuasive. As noted by Requester (3PR Resp. Br. 25), Menas refers to element 156 as “[t]he main power control/indicator” and states that it “is used to enable or disable power to the line-cord device 104.” Menas, ¶ 0046. Furthermore, Figure 2 of Menas explicitly depicts switch 156 having “ON” and “OFF” switch-position indicia. It is true that Menas does disclose that the power control/indicator may include a fuse device. Menas, ¶ 0046. However, we understand this to be an optional feature that may be included as an addition to the main on/off switch. See id. (stating that the fuse device is included in one embodiment of the main power control indicator 156, and that other surge, voltage, and/or current protection devices may be included in other embodiments). Owner’s additional argument—that switch 1008 is external to the AS Power Supply—is likewise unpersuasive. Menas describes all of Figure 10 as depicting a block diagram of the AS power system. Menas, ¶ 0022. Furthermore, Menas states that element 102G references the AS power system (e.g., Menas, ¶ 0119), and Figure 10 depicts element 102G as corresponding to all of the components of the figure—including ON/OFF SWITCH 1008. We therefore understand the designation “TO ASPS COMPONENTS,” which appears on the output of linear regulator 1016, as intending to mean “to one or more [other] components in the ASPS 102G.” Menas, ¶ 0131. For the foregoing reasons, Owner has not persuaded us of error in the Examiner’s anticipation rejection of independent claim 1 over Menas. Accordingly, we will sustain the Examiner’s rejection of that claim, as well Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 34 as the rejection of dependent claims 2 and 3, which are not separately argued. PO App. Br. 35. Having addressed the adopted rejections, we now turn to the issues and contentions associated with Requester’s cross appeal. COMPLIANCE WITH REQUESTER’S APPEAL BRIEF Turning to Requester’s cross-appeal, Owner objects to Requester’s Appeal Brief on the grounds that (1) “Requester’s purported Evidence Appendix fails to indicate where each item of evidence was entered in the record as required by 37 C.F.R. § 41.67(c)(ix);” (2) “Requester relies on Evidence that was not in the record;” and (3) Requester’s Appeal Brief incorporates by reference previously submitted arguments, thereby violating both the letter and the spirit of the thirty-page word limit of Rule 1.943(c). PO Resp. Br. 3. Owner requests that Requester’s “cross-appeal [] be dismissed for ‘failure to file a [proper] brief’ under 37 C.F.R. § 41.67(b).” Id. at 4. Owner’s request is denied. Owner does not cite to any authority indicating that the determination of an appeal brief’s propriety is an appealable matter. To the contrary, the determination of whether an appeal brief is proper is a petitionable matter and is, therefore, not before us. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 35 BI–21 THROUGH BI–27: YANG ALONE OR IN VIEW OF VARIOUS COMBINATIONS OF ADMITTED PRIOR ART, ARIMA, DETTWEILER, SUZUKI, KIM, AND KALIN Requester cross appeals the Examiner’s decision to not adopt proposed Bases of Invalidity BI–21 through BI–27, which Requester proposed in relation to claims 24-27 and 33-37. 3PR App. Br. 19-29. Each of these proposed rejections is based upon the position that Yang discloses the limitation of independent claim 24, “power circuitry for converting the input power voltage to the output power voltage . . . .” Id.; see also id. at 20 (explaining that Arima was combined with Yang to address the additional limitation relating to “the load sensing portion determining the power or load being drawn from the power device by measuring the frequency of the pulses”). See also id. at 28-29 (explaining that the Owner’s admitted prior art was being combined with Yang to address the load-sensing-portion limitation of claim 33). For the reasons set forth above in relation to Owner’s appeal of independent claim 11, we are not persuaded that Yang discloses converting input power voltage to output power voltage. Accordingly, we sustain the Examiner’s Decision to not adopt the following proposed Bases of Invalidity: BI–21. Claims 24, 26, 33, 34 and 37, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima. BI–22. Claim 25, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Dettweiler. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 36 BI–23. Claim 27, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Suzuki. BI–24. Claim 35, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima and Kim. BI–25. Claim 36, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Arima in view of Kalin. BI–26. Claim 33, which Requester asserted to be anticipated under 35 U.S.C. § 102(b) by Yang. BI–27. Claim 33, which Requester asserted to be obvious under 35 U.S.C. § 103(a) over Yang in view of Owner’s admitted prior art. BI–28: WATANABE IN VIEW OF HOEYER Requester appeals the Examiner’s decision to not adopt the proposed rejection of claims 33-35 over Watanabe in view of Hoeyer. 3PR App. Br. 29-31. While independent claim 24 is not included in proposed BI–28, claims 33-35 ultimately depend from independent claim 24. And the Examiner indicates that Basis of Invalidity 28 is not adopted because of language contained within the last limitation of claim 24, which language was incorporated into the claim from dependent claim 30 during the reexamination proceeding. Ans. 22-23; see Claim Amendment (filed June 6, 2013); cf. ’833 Patent, claims 24 and 30. Accordingly, independent claim 24 is reproduced below with the disputed claim language emphasized: Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 37 24. A power device for supplying power to an electronic device, the power device comprising: a first portion for receiving electrical input power from a source, the input having an input voltage; a second portion for delivering electrical output power to the electronic device, the output power having an output voltage; power circuitry for converting the input power voltage to the output power voltage and for determining an “off” state of the power device; switching circuitry operable to electrically activate the power circuitry to the “on” state; and a load sensing portion operable to sense one or more pulses and determine the power or load being drawn from the power device by the electronic device based thereon, the load sensing portion determining the power or load being drawn from the power device by measuring the frequency of the pulses. Contentions and Arguments The Examiner finds that “Hoeyer detects a duty cycle/frequency, and if the level is above or below a threshold, the charging current is changed[, but there] is no indication that such pulses are used to ‘determine the power or load being drawn’ as claimed.” RAN 16. Requester argues that the disputed language is met by Hoeyer’s phase control circuit 601 that monitors a duty cycle to determine the load of a battery in a mobile device. 3PR App. Br. 30. As explained by Requester, “[t]he duty cycle is monitored by the phase control circuit 601 of which one example is in more detail worked out in Figure 7B” (see Hoeyer para. 0041). Hoeyer notes the frequency is recognized from a transformer 602: “Preferably, the current Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 38 limiter 615 and phase control circuit 601 are located after the transformer and rectifier (both noted with reference number 602 in Figure 7A)” (see Hoeyer para. 0042). In addition, Hoeyer is explicit that the duty cycle represents “a frequency in which current pulses are transmitted from the charger” (see Hoeyer para. 0028). Id. at 30-31. Requester reiterates this argument in the Rebuttal Brief: Hoeyer discloses that duty cycle depends from the load of the device to be charged: “[w]hen charging a rechargeable battery by using a pulse charge system, the impact of the inner resistance 105 of the battery leads to a lower transfer of energy. The raise in voltage reduces the duty cycle of the charging pulse.” (see Hoeyer para. 0010). In addition, Hoeyer discloses a phase control circuit 601 monitors a duty cycle to determine the load of a battery in a mobile device: “[t]he duty cycle is monitored by the phase control circuit 601 of which one example is in more detail worked out in Figure 7B” (see Hoeyer para. 0041), and accordingly measures frequency to determine the load being drawn. 3PR Reb. Br. 16. Analysis Requester’s arguments are persuasive that Hoeyer describes determining the power or load being drawn in order to determine the cycle/frequency to be employed in accordance with that particular pulse width modulation scheme. However, this question is not in dispute. Rather, the relevant inquiry is whether the converse is true: whether Requester has established that the power or load being drawn is determined by measuring the duty cycle or frequency of the pulses. We agree with the Examiner that Requester has not established sufficiently that Hoeyer teaches this latter determination. The fact that Hoeyer’s phase control circuit 601 monitors the duty cycle and adjusts the Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 39 current limit when the duty cycle strays outside of the 90% to 95% range, is not itself sufficient to conclude that the phase control circuit further determines what the power or load being drawn actually is. In oral arguments, Requester urges that the claim language should be understood to merely require that that the frequency of the pulses be measured “for the purpose of determining when to go to stand-by power or to adjust the stand-by power.” ’7294 Tr. 48. We disagree that such a broad reading of claim 24 would be reasonable. The disputed language does not recite merely that the load sensing portion determines whether the power or load being drawn is above or below some threshold. Rather, the claim language more specifically requires that the load sensing portion determine the actual power or load being drawn. Because we do not adopt the claim interpretation urged by Requester, we do not address Requester’s further assertions at oral arguments that pulse width modulation was old and that pulse width modulation was taught by additional references such as Odaohhara, Makino, and Bhogal. ’7294 Tr. 47-48. The question before us is not merely whether pulse width modulation was known. Furthermore, no rejections of claim 24—much less rejection of dependent claims 33-35—were presented in this appeal based upon Watanabe in combination with any of the references additionally cited by Requester—Odaohhara, Makino, or Bhogal. Accordingly, we sustain the Examiner’s Decision to not adopt the rejection of claims 33-35 over Watanabe in view of Hoeyer, as proposed in Bases of Invalidity BI–28. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 40 BI–11: BȦGENHOLM BI–12: DARBY IN VIEW OF MENAS BI–16 AND BI–17: TRACY ALONE AND IN VIEW OF KUBO Requester asserts multiple reasons for why the cited references respectively render various ones of claims 1, 2, 6-11, 16, 17, 20, 21, and 56- 58 unpatentable. Request 132-182 and 219-244. The Examiner has not addressed the merits of these rejections. RAN 17-21. Instead, the Examiner is persuaded that none of Bȧgenholm (provisional application filed Jan. 18, 2008), Darby (filed Nov. 21, 2007), and Tracy (filed July 24, 2007) qualify as prior art. Id. The Examiner concludes that Owner conceived the invention prior to Tracy’s filing date of July 24, 2007—the earliest filing date of these three references. RAN 18-19. The Examiner also finds that Owner established diligence from prior to the July 24, 2007 conception until the application was filed on May 27, 2008—the date on which the invention was constructively reduced to practice. RAN 18-21. Requester disputes the Examiner’s finding that Owner has established either conception of the claimed inventions or diligence in reducing the inventions to practice. 3PR App. Br. 7-19; 3PR Reb. Br. 3-11. Accordingly, the propriety of the four listed Bases of Invalidity hinges solely on whether the respective cited references qualify as prior art. Of the claims subject to the priority disputes, claims 1, 11, and 56 are independent. We address whether Owner sufficiently established conception for these three independent claims. Because we conclude Owner has not established prior conception of every limitation of claim 56, we then consider the question of Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 41 whether Owner established diligence only with respect to independent claims 1 and 11. Principles of Law Rule 37 C.F.R. § 1.131 entitled “Affidavit or declaration of prior invention,” describes the showing of facts required to establish conception and reduction to practice, or conception coupled with diligence: (b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. Our reviewing court in Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1988) states: Conception is the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. A reduction to practice can be either a constructive reduction to practice, which occurs when a patent application is filed, or an actual reduction to practice. In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of [the claimed subject matter]; and (2) he determined that the invention would work for its intended purpose . . . . Depending on the character of the invention and the problem it solves, determining that the invention will work for its intended purpose may require testing. (citations omitted). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 42 Although Owner’s averments in a § 1.131 declaration do not require corroboration unlike interference proceedings, 3 facts—not conclusions— must still be alleged. MPEP § 715.07(I). The owner must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by the owner. In re Borkowski, 505 F.2d 713, 718-19 (CCPA 1974). It is necessary to identify specific acts and dates. See In re Harry, 333 F.2d 920, 922 (CCPA 1964) (Rule 131 affidavit insufficient because “[i]t asserts that facts exist but does not tell what they are or when they occurred.”). The filing of a patent application is a constructive reduction to practice of the invention disclosed therein. Frazer v. Schlegel, 498 F.3d 1283, 1288 (Fed. Cir. 2007). In order to establish actual reduction to practice, an inventor must have (1) constructed an embodiment or performed a process that met all the claim’s limitations; and (2) determined that the invention would work for its intended purpose. Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, 661 F.3d 1378, 1383 (Fed. Cir. 2011). 3 MPEP § 715.07(III) (citing Ex parte Hook, 102 USPQ 130 (Bd. App. 1953)). But see Ex parte Olchanski, No. 2010-001333, 2012 WL 5872286, at *3 (PTAB 2012) (non-precedential) (“Thus to establish conception, the record must show that the inventors themselves had a permanent idea of every feature of the claimed invention and provide corroborating evidence that would enable one of ordinary skill in the art to make the invention.”) (citing Coleman v. Dines, 754 F.2d 353,359 (Fed. Cir. 1985)) (emphasis added). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 43 Conception Generally Requester argues that Owner’s § 131 Declaration, as supported by the attached Conception Summary Exhibit (“CSE”) and the exhibits cited by the CSE, fails to establish conception of various claim features. 3PR App. Br. 11-12; see also 3PR App. Br. 7 (clarifying that the particular § 131 affidavit being referenced is the second McGinley Declaration). More specifically, Requester argues that Owner “relies upon Exhibits B and D [as referenced within the CSE] . . . to demonstrate alleged conception.” 3PR App. Br. 11- 12 (citing the second McGinley Dec. ¶ 7). Requester first contends that Exhibit B—an Invention Disclosure Form dated October 27, 2006—“fails to include any disclosure of a switch, switch assembly or switch circuitry as claimed in independent claims 1, 11 and 56.” 3PR App. Br. 11. Requester further contends that Exhibit D does not disclose [(1)] a DC output voltage (claims 1 and 56), [(2)] a switch assembly having powered terminals and responsive to movement or at least a movable portion thereof to electrically connect the terminals and to provide an output signal to activate the circuitry to the ‘on’ state (claim 11), [(3)] circuitry for converting power and determining an ‘off’ state of the circuitry (claim 11), and [(4)] a cable including a first and second pair of wires (claim 56). Id.12. As a threshold matter, we question the sufficiency of some of Requester’s arguments because Requester is merely arguing Exhibits B and D individually—not which features both exhibits, as a whole, purportedly Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 44 fail to corroborate. 4 Regardless, we address each of Requester’s contentions for completeness. We first address Requester’s contentions that Exhibit B fails to disclose a switch, switch assembly and circuitry, as recited by independent claims 1, 11, and 56. This argument is not persuasive. Regardless of what Exhibit B may fail to disclose, conception of these features is sufficiently corroborated by Exhibit D. Exhibit D is an email from Don Rimdzius to Jim McGinley dated December 27, 2006. The e-mail outlines “Patent Ideas, Concepts” for a “Plug-in Charger with Fuel Cell.” See Ex. D. According to the email, a plug style cell phone charger includes a shutdown circuit such that the “[c]harger would go into a very-low-idle-power mode or no-idle-power mode when the phone is disconnected . . . . The no-idle-power mode could be engaged by a simple switch make and break when plugging the phone into the charger connector.” Ex. D ¶¶ 1, 2 (emphasis added). According to the e-mail, 1) One implementation would require an additional wire in the power cable and would tie up one terminal on the phone connector which would need to be reserved for this implementation. The phone multi-pin connector itself could act 4 In addition to relying on Exhibits B and D to demonstrate conception of independent claims 1, 11, and 56, Owner’s Conception Summary Exhibit also references Exhibit O4 (see CSE 1-3, 6, and 7). However, Exhibit O4, which is a webpage printout entitled “External Power Supplies,” has been either created or last updated as recently as at least 2011. Ex. O4 (stating “The ENERGY STAR External Power Supply” program was suspended on December 31, 2010). Because this date is later than the relevant dates of the disputed references, we will limit our consideration to the contents of Exhibits B and D. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 45 as the charger turn-on switch with two connector pins shorted together in the phone to close the circuit when plugged into the charger. 2) Another implementation would have a small switch molded into, behind, or adjacent to the charger connector so that plugging the connector into the cell phone would close the switch to power up the charger. The switch closing mechanism could be a spring loaded sliding sheath that retracts when the connector is plugged in the phone. This implementation would also require an additional wire in the cable but would not tie up the existing phone connector pins. 3) Another implementation would use an RFID chip or other wireless transmission means in the cell phone that would wirelessly signal the charger primary circuit chip to shut off the power or to go into a low power sleep mode. Ex. D ¶¶ 4-6 (emphasis added). Because Exhibit D discloses switches, switch assemblies, and switch circuitry (see emphasized portions supra), Requester’s arguments regarding what features are failed to be included in Exhibit B alone are not persuasive. We also disagree with Requester that Exhibit D fails to sufficiently disclose a DC output voltage, as required by claims 1 and 56. See 3PR App. Br. 12. As explained supra, Exhibit D is directed to a plug-in charger for a cell phone. One of ordinary skill in the art would have understood that rechargeable cell phones typically operated on DC power. As such, a charger for such a device would implicitly output DC voltage. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (the teachings of a reference may be taken in combination with knowledge of the skilled artisan to put the artisan in possession of the claimed invention within 35 U.S.C. § 102 even though the patent does not specifically disclose certain features). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 46 Conception of Claim 11 We disagree with Requester that Exhibit D fails to sufficiently disclose “a switch assembly having powered terminals and responsive to movement or at least a movable portion thereof to electrically connect the terminals and to provide an output signal to activate the circuitry to the ‘on’ state” as required by claim 11. See 3PR App. Br. 12. As noted above, Exhibit D discloses 2) Another implementation would have a small switch molded into, behind, or adjacent to the charger connector so that plugging the connector into the cell phone would close the switch to power up the charger. The switch closing mechanism could be a spring loaded sliding sheath that retracts when the connector is plugged in the phone. Ex. D ¶ 5. We disagree with Requester that Exhibit D fails to sufficiently disclose “circuitry for converting power and determining an ‘off’ state of the circuitry,” as required by claim 11. See 3PR App. Br. 12. We initially note that this claim limitation requires the circuitry perform two functions: (1) convert power and (2) determine an ‘off’ state. We address these two functions of the limitation separately. Owner’s statements in the Conception Summary Exhibit, as well as the Exhibits B and D, sufficiently indicate Owner conceived of “circuitry for converting power.” Owner states that the limitation is supported by Exhibit B: “The invention provides a means of saving energy when the External Power Supply is unplugged from the portable device it is designed to charge such as: (cell phones, laptops, Music players ET.)”. CSE 2 (citing Ex. B, p. 1, ¶ 3, l. 2). Exhibit B does state this. See Ex. B ¶ 3. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 47 We also agree with Owner’s annotation provided in the Conception Summary Exhibit, “[c]onversion circuitry is a standard function of [an] external power supply used with cell phones, laptops and music players known to someone of ordinary skill in the art and defined as such by Energy Star (Department of Energy) . . .” CSE 2-3. Furthermore, as discussed supra, Exhibit D discloses a plug-in charger for powering a cell phone. One of ordinary skill in the art would have understood (1) this disclosure means that such chargers are intended to be plugged into electrical wall outlets and the like; (2) electrical wall outlets typically provide AC power; and (3) because portable cell phones typically operate on DC power (see supra), for such uses, the charger must necessarily include an AC to DC power converter, such as a rectifying bridge. We now turn to the question of whether Owner has sufficiently established conception of “circuitry for . . . determining an ‘off’ state of the circuitry.” In order to reach this question, we must first resolve the parties’ disagreement as to which embodiment of the present invention claim 11 is directed. See 3PR App. Br. 4 (asserting that claim 11 is directed to the embodiment of Figure 11); cf. PO Resp. Br. 39 (asserting that claim 11 is directed to the embodiment of Figure 3). “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d at 1262. More specifically, we first inquire as to which of various potential meanings should be afforded the claim term “determining.” One definition of “determine” is “2. to conclude or ascertain, as after reasoning, Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 48 observation.” WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE ENGLISH LANGUAGE 393 (1989). According to this definition, the term “determine” could be used to mean that the circuitry is ascertaining an ‘off’ state—e.g., ascertaining when the circuitry is being used. However, the fact that the power supply circuitry is not being used (e.g., when a rechargeable device is attached but fully charged, or when the rechargeable device has been detached) does not necessarily mean that the power supply’s circuitry is in an ‘off’ state. The whole purpose of the present invention is to reduce or eliminate phantom load when power circuitry is not in use. ’833 Patent, col. 1, l. 63 - col. 2, l. 3. As such, ascertaining that the power supply’s circuitry is not providing power to an attached rechargeable device technically does not constitute ascertaining that the power supply, itself, is in the ‘off’ state. “Determine” also has alternative definitions: “4. to cause, affect, or control; fix or decide . . . 5. To give direction or tendency to; impel.” WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE ENGLISH LANGUAGE 393 (1989). As such, the term could be used to mean causing, inducing, establishing, or realizing an ‘off’ state. That is, causing the circuitry to turn to the ‘off’ state. However, claim 11, itself, additionally recites “wherein the circuitry automatically turns the circuitry to the ‘off’ state . . .” This additional limitation indicates that “determining an ‘off’ state” is something distinct from causing the circuitry to actually turn to the ‘off’ state. Otherwise, the latter limitation would be superfluous. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 49 so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005). The ’833 Specification does not provide an express definition for the term “determining.” Furthermore, the phrase “determining an ‘off’ state” is primarily recited in the Summary of the Invention section of the ’833 Patent. See ’833 Patent, col. 3, ll. 48-50; col. 4, ll. 37-39; col. 5, ll. 6-8. The Detailed Description section of the ’833 Specification contains a limited usage of “determining an ‘off’ state”—the term is used in relation to the Figure 8 and 13 embodiments: As an example [in the Figure 8 embodiment], the load sensing device 400 [of IC 210] senses the pulse width and recognizes how slow or fast the pulse is repeated to determine the load. As such, when the battery 20a of the electronic device 20 ceases to draw power, the power device 10 can be calibrated to switch to the ‘off’ state. ’833 Patent, col. 9, ll. 33-38 (emphasis added). FIG. 13 shows the switch 50 preferably being a solid state switch, and the power device circuit architecture is designed so that upon momentary connection (including connection and subsequent release) a small current through the switch 50 is recognized to power on or activate the device from an “off” state, and current at resistor Rsense is recognized by Gain and Level Detection to control the Primary Switch, voltage below a threshold being used to determine and switch to an “off” state for the power device. Col. 11., ll. 21-29 (emphasis added). See also ’833 Patent, col. 6, ll. 24-26 (wherein the Brief Description of the Drawings section states “FIG. 13 is a circuit diagram of an exemplary form of the power device showing a switch for determining the state of the power device with a current sensing circuit”) (emphasis added). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 50 The Background section of the ’833 Specification also provides general guidance as to how the term “determine” is being used. The Specification states the following in relation to a charger/adaptor produced by a competitor: “[t]he Nokia device also requires some type of mechanism for determining when the device should be shut down.” ’833 Patent, col. 2, ll. 44-46. This usage of “determining” within both the Detailed Description section and also the Background section of the ’833 Patent pretty clearly indicates that the term is used to mean ascertaining when the circuitry is not being used—not to mean actually turning the circuit to the ‘off’ state. Accordingly, we understand the claim term, “circuitry for . . . determining an ‘off’ state of the circuitry” to mean that the power supply circuitry includes an internal mechanism for ascertaining when the power supply’s circuitry is not supplying power to a portable rechargeable electronic device or otherwise not in use, regardless of whether the power supply circuitry is actually in an ‘off’ state. A broader question still remains, though. Considering that claim 11 recites both of the following limitations, “circuitry for converting the input power voltage to the output power voltage and for determining an ‘off’ state of the circuitry” (third limitation), and (2) the “circuitry automatically turns the circuitry to the ‘off’ state, the circuitry drawing no power when in the ‘off’ state” (last limitation), the remaining question is this: to which embodiment is claim 11 directed? Requester asserts that these two cited limitations are both supported by the circuitry 400, which is disclosed in the portion of the Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 51 ’833 Specification (col. 9, ll. 17-64) that related to the Figure 8 embodiment. 3PR App. Br. 4. Owner disputes that this claim language obtains support from the Figure 8 embodiment. PO Resp. Br. 2. Owner asserts that the correct support for claim 11 is “[c]ircuitry 30, 52, column 7, line 11, and lines 36-46; column 7, lines 50-53, referring to Fig. 3 (col. 7, line 47).” Id. Owner further contends that “Fig. 3 is to be contrasted with Fig. 8; the latter is a different embodiment that does not have the off state drawing zero power referred to in claim 11.” Id. Counsel for Owner further reiterates at oral arguments that the Figure 8 embodiment is outside the scope of the claims (’7294 Tr. 16) and that he is unaware of any embodiment specifically disclosed in the ’833 Patent other than the Figure 3 embodiment to which claim 11 could be directed (id. at 19-20). A close review of the ’833 Patent Specification does not fully or definitively illuminate what combination of features the original application drafter was envisioning when drafting the present claims. However, the Specification does seem to reasonably indicate that the Owner’s and Requester’s positions on this issue are both only partially accurate, at best. Owner is correct that the last limitation of claim 11—“the circuitry automatically turns the circuitry to the ‘off’ state, the circuitry drawing no power when in the ‘off’ state”—is not directed to the embodiment of Figure 8. Figure 8 is directed to an embodiment that employs an IC 210 and a load sensing device 400 that measures the power or load being drawn from the power device. ’833 Patent, col. 9, ll. 5-38. In the Figure 8 embodiment, “the power device 10 is not completely off, [but is instead] in [an] ultra-low power consumption state and is able to power-up more quickly.” Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 52 ’833 Patent, col. 9, ll. 52-54. That is, in order for the power supply to be able to sense the load or power being drawn, at least a portion of the power supply has to be powered, at least intermittently, to some low, but non-zero, level. However, in contrast to Owner’s position, the ’833 Specification does not disclose the “no power in the ‘off’ state” limitation in relation to the Figure 3 embodiment. See col. 7, l. 47 – col. 8, l. 63 (discussing the Figure 3 embodiment). Instead, the ’833 Specification discloses this limitation in relation to the biased-sheath-connector embodiment of Figure 6. See col. 8, ll. 57-59 (“Preferably, the sheath 110 is biased forwardly so that, when the electronic device 20 is disconnected, the sheath 110 automatically turns the power device to the ‘off’ state.”). The Figure 6 embodiment, though, does not disclose “circuitry . . . for determining an ‘off’ state of the circuitry,” as interpreted supra. See col. 8, ll. 36-59. Neither does the Figure 3 embodiment. See col. 7, l. 47 – col. 8, l. 63. Instead, the circuitry for determining an ‘off’ state is associated with embodiments that include the load sensing device 400, IC chip 210, and switch 340. See, e.g., col. 9, ll. 5-54 (discussing the Figure 8 embodiment). To the best we can understand, then, claim 11 appears to be directed to a power device having multiple features that were combined from various embodiments. Specifically, claim 11 recites a power device that includes a first mechanism, such as a biased-sheath connector of Figure 6, that automatically turns the power device to the ‘off’ state. To read on claim 11, the power device must additionally include a second mechanism, such as the IC 210, switch 340, and load sensing device 400 of Figure 8, that determines Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 53 an ‘off’ state of the circuitry. According to this interpretation, the second mechanism for determining an ‘off’ state would be operable at least when the first mechanism has not automatically turned the circuitry to the ‘off’ state. 5 This interpretation is supported by the passage of the ’833 Specification that states “various power devices are described having a variety of features that may be selected and/or combined within the scope of the present invention to provide a means for low-power consumption of phantom load, or intermittent power consumption, or no power consumption.” Col. 10, ll. 45-49. Having interpreted the claim language, we now turn to the question of whether Requester has established that Owner failed to demonstrate timely conception of claim 11. Owner states in the Conception Summary Exhibit that support for the limitation “wherein the circuitry automatically turns the circuitry to the ‘off’ state, the circuitry drawing no power when in the ‘off’ state” can be found by the disclosure of Exhibit D, “The no-idle-power mode could be engaged by a simple switch make and break when plugging the phone into the charger connector.” CSE 3 (citing Ex. D, ¶ 4, l. 1). Furthermore, as explained supra the ’833 Specification states in relation to the Figure 6 sheath connector embodiment of switch assembly 50 that “[p]referably, the sheath 110 is biased forwardly so that, when the electronic device 20 is disconnected, the sheath 110 automatically turns the power device to the ‘off’ state.” As such, Owner has demonstrated timely conception of this last limitation of claim 11. 5 We do not reach any conclusions as to whether the Specification provides support for a device that can determine an ‘off’ state while already being in the ‘off’ state that draws no power. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 54 We now consider whether Owner has established conception of the claim 11 language, “circuitry for converting the input power voltage to the output power voltage and for determining an ‘off’ state of the circuitry” (emphasis added). In the first ’833 McGinley § 131 Declaration, inventor McGinley states that the feature of “circuitry for monitoring power and/or load consumption and determining an ‘off’ state” was conceived on October 9, 2006, as corroborated by Exhibit B ¶¶ 1, 3. First ’833 McGinley Decl. ¶ 12. In the Conception Summary Exhibit, Owner similarly states that the claim limitation is supported by the following statement that is contained in Exhibit B –The Invention Disclosure Form: “The invention provides a means of saving energy when the External Power Supply is unplugged from the portable device it is designed to charge such as: (cell phones, laptops, Music players ET)”. CSE 2-3 (citing Ex B ¶ 3). As explained supra¸ this disclosure demonstrates conception of the claim 11 language “circuitry for converting the input power voltage to the output power voltage.” However, this disclosure provides insufficient indication that Owner conceived of circuitry for determining an ‘off’ state of the circuitry. This is not the end of the inquiry, though. Although not cited in the first ’833 McGinley Declaration, the fourth paragraph of the Information Disclosure Form does disclose circuitry for determining an ‘off’ state of the circuitry state. Ex. B ¶ 4 (stating the invention’s development solves the technical problem through “[t]he implementation of a serial port that automatically senses when the portable device is unplugged while the external Power Supply [remains] plugged into an electrical outlet”). Accordingly, Owner has established timely conception of circuitry for Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 55 determining an ‘off’ state as well as for circuitry for converting the input power voltage to the output power voltage. Requester further argues that Exhibit D does not show conception of the disputed claims because “Exhibit D . . . contains no schematic drawings or blueprints that would allow one or ordinary skill in the art to pursue this project goal.” 3PR App. Br. 12. As such, one of ordinary skill in the art could not begin to construct the claimed invention without undue experimentation. Id. This argument is not persuasive because demonstrating conception does not necessarily require an Owner to provide drawings or blueprints. Rather, conception is the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1988). Requester does not provide sufficient evidence to demonstrate that the invention is of such a nature that Owner would have to provide more detail than that contained within the exhibits (such as additionally providing drawings or blueprints) in order to demonstrate possession of a definite and permanent idea of the complete and operative invention. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Conception of Claims 56-58 We agree with Requester (see 3PR App. Br. 12) that Exhibit D fails to sufficiently disclose “a cable including a first and second pair of wires,” as Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 56 recited in claim 56. Owner asserts that this claim limitation is supported by two passages of Exhibit D. The first passage reads as follows: One implementation would require an additional wire in the power cable and would tie up one terminal on the phone connector which would need to be reserved for this implementation. The phone multi-pin connector itself could act as the charger turn-on switch with two connector pins shorted together in the phone to close the circuit when plugged into the charger. CSE 7 (Ex. D ¶ 5) (emphasis added). This passage merely indicates that Owner had conceived of the general idea of including additional wiring in the power cable, and more specifically, conceived of an alternative species of the general invention wherein only a single additional wire is included in the power cable. This passage does not corroborate that Owner had conceived of using two-wire- pair species of the invention that is recited in claim 56: “a first pair of wires for delivering power to the electronic device and a second pair of wires for communicating with the switch assembly.” To the contrary, the record indicates that the use of two wires was not conceived until some later time. See Ex. F (email from Underwriters Laboratories (UL) employee, Michelle M. Hahnlein, to Don Rimdzius and copied to Jim McGinley; dated January 25, 2008. In the email of Exhibit F, Ms. Hahnlein indicates that technical regulations may prohibit the initially proposed cable design because wiring for Class 1 and Class 2 circuits would be in the same cable. The email further explains that “[t]here are [alternative] cable types that include power circuit conductors and signal circuit conductors.” Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 57 The Conception Summary Exhibit also asserts that a second passage of Exhibit D corroborates conception: “The implementation of a serial port that automatically senses when the portable device is unplugged while the external power supply remains plugged into an electrical outlet.” CSE 7 (citing Ex. D [sic: B], ¶ 5, l. 1). 6 This second passage, itself, does not indicate that Owner conceived of a cable having two pairs of wires as claimed. In the Conception Summary Exhibit, Owner supplements this cited passage by adding the following explanatory annotation: “A serial port of the USB interface has a pair of data lines and a second pair of power lines. 5V, GRND, D+ and D-.” CSE 7. However, we find insufficient evidence that either the second passage or any other portion of either Exhibit B or D supports Owner’s assertion that that a USB interface having two pairs of power lines was implied by the second passage or conceived prior to Tracy’s July 24, 2007 filing date. To summarize, Owner points to only the two passages respectively contained within Exhibits B and D as evidence of conception of a cable having two pairs of wires. CSE 7. Neither of these exhibits corroborate conception of such a feature. As such, Owner has not established conception at a time preceding the filing date of Tracy for the claim limitation pertaining to the cable including two pairs of wires. This limitation appears in independent claim 56 and dependent claim 7, which depends from independent claim 1. It also appears in claims 8, 9, 57, and 58 6 This second passage is actually set forth in Owner’s Invention Disclosure Form (see Ex. B, ¶ 4)—not Exhibit D. We find this incorrect citation to constitute harmless error. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 58 by virtue of these claims’ respective dependency from claims 7 and 56. Because timely conception has not been established for this claim limitation, we need not address whether Owner established diligence with respect to independent claim 56. We therefore only address diligence with respect to independent claims 1 and 11. Diligence Requester contends multiple reasons for why the second ’833 McGinley § 131 Declaration fails to establish diligence in reducing the invention to practice during the relevant period, the period extending from the July 24, 2007 102(e) date of Tracy until the filing date of the May 27, 2008 filing date of the application that matured into the ’833 Patent. 3PR App. Br. 7-11, 13-18; see also second ’833 McGinley Decl. ¶ 6. Requester’s arguments (3PR App. Br. 7-11, 13-18) are based primarily on the position that at the time of the conception of the present invention, Owner was working on two projects. One project (the present invention) was an Eco-Charger that has switches and circuitry for reducing or eliminating phantom load. The other project was the development of a Travel Charger that has various features unrelated to reducing phantom load, such as spring-biased electrical prongs. Requester contends that Owner was not diligent in reducing the Eco-Charger to practice because Owner postponed and delayed working on that project while first working on the Travel Charger. Owner contends that while the Travel Charger as originally envisioned would not have such an ‘off’ state; . . . once the Eco-Charger was conceived, the plans for the Travel Charger were augmented to include an Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 59 Eco-version.” PO Resp. Br 12 (citing the second ’833 McGinley Decl. ¶ 8; emphasis added by Owner). Owner also contends that “many of the activities related to the development of the Travel Charger and its various components (unrelated to the ‘off’ state) are also relevant to the Eco- Charger, as it was contemplated that these two products would have many components in common.” Id. (emphasis omitted). According to Owner, then, it is irrelevant that the Eco-Charger of the ’833 Patent and the Travel Charger are different inventions (PO Resp. Br. 12) because “[u]nder some circumstances an inventor should also be able to rely on work on closely related inventions as support for diligence toward the reduction to practice on an invention in issue.” Id. at 10 (citing Ginos v. Nedelec, 220 USPQ 831, 836 (BPAI 1983)). For example, Counsel for Owner argued at the oral hearing that first working on aspects of the Travel Charger was necessary to develop the Eco-Charger. ’7294 Tr. 58-59 (“In order to build and test the circuit, you want to plug it into the wall. You need the springs and the contacts on the AC side to plug it into the wall”). Owner does not persuade us, though, that any and all of the work involved in developing the Travel Charger can be relied upon to show diligence in reducing to practice every feature of the Eco-Charger that is set forth in the disputed claims of the ’833 Patent. As further acknowledged by Owner, “[t]he work relied upon must be directed to attaining a reduction to practice of the subject matter of the counts. It is not sufficient that the activity relied on concerns related subject matter.” PO Resp. Br. 10 (no citation provided; see Gunn v. Bosch, 181 USPQ 758, 1973 (BPAI 1973)). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 60 In the present case, it may well be true that the Eco-Charger needs to be plugged into a wall to build and test the circuit. However, this fact does not explain why one needed to employ specifically the spring-biased contacts of the Travel Charger for this purpose. That is, Owner fails to explain why work on various aspects of the Eco-Charger, such as the switch assembly or the automatic shutoff circuitry, could not have at least commenced using conventional components, such as off-the-shelf plug prongs for supplying electrical power. The present case is distinguishable from the conclusion our predecessor tribunal reached in Justus v. Appenzeller, 177 USPQ 332 (BPAI 1971). In that interference proceeding, the panel held that “in deciding the question of diligence it is immaterial that the inventor may not have taken the most expeditious course.” Id. at 340. In that case, inventor Justus had been found to have exercised “reasonable diligence in his efforts toward securing [the particularly designed] hardware required for actual reduction to practice of in the invention,” instead of using stock items. Id. The panel rejected Appenzeller’s argument “that Justus ‘had relegated’ the project ‘to complete unimportance.’” Id. We do not mean to imply we conclude that the present inventors relegated the development of the Eco-Charger to complete unimportance. We are instead saying that even if we were to assume arguendo that sufficient justification existed for delaying work on certain aspects of the Eco-Charger until certain aspects of the Travel Charger were completed, Owner does not sufficiently explain why work on the Travel Charger necessitated delay on every aspect of the Eco-Charger. To the contrary, Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 61 inventor McGinley states that “many of the activities related to the development of the Travel Charger and its various components (unrelated to the ‘off’ state) are also relevant to the Eco Charger, as it was contemplated that these two products would have many components in common.” Second ’833 McGinley Decl. ¶ 8. That is, inventor McGinley acknowledges that various features of the Travel Charger were merely relevant to the Eco- Charger. He does not allege that developing any component of the Travel Charger was a necessary prerequisite to starting any work on the Eco- Charger. Inventor McGinley does state that “it was always the intention to incorporate the [Eco-Charger] invention as a feature into the existing Travel Charger project under development. . . The Project Proposal of January 17, 2008 referenced VoltStar’s request for ‘Eco Charger version” of the travel Charger. Second McGinley Decl. ¶ 11 (citing Ex. Q2, ¶ 3). Mr. McGinley also cites additional documents to evidence the original intent of the inventors. Id. (citing, e.g., Ex. P3 (“Product Development Project Q08- 1377A;” dated March 18, 2008)). 7 As an initial matter, we note that statements made in the year 2008 are of questionable value in corroborating what the inventors may have intended back at the time of conception in 2006. Even if we were to assume arguendo that inventors did, in fact, initially intend as of 2006 to incorporate the phantom-load reducing or eliminating features of the Eco-Charger into the Travel Charger, that fact 7 The title and date of Exhibit P3 is set forth on page 3 of Owner’s Reduction to Practice Summary Exhibit (filed Dec. 4, 2013). Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 62 would not change the outcome. It would merely be evidence that the inventors envisioned that the two distinct inventions were subcombinations that might be able to be used together in a single combination. See MPEP § 806.05(d). But the present claims are not directed to the combination of the two inventions. The claims are only directed to features of the Eco- Charger. For example, independent claims 1 and 11 do not recite spring- loaded prongs. Cf. originally filed claim 1 of patent application 12/124,515 (filed by James W. McGinley et al.; titled “CHARGER PLUG WITH IMPROVED PACKAGE”) (reciting a housing and spring contacts); claim 1 of patent application 13/111,808 (filed by James W. McGinley et al.; titled “HOUSING CONFIGURATION FOR CHARGER PLUG”)(reciting blade members secured with a housing). Such an intent to manufacture a charger that includes both inventions, then, would not sufficiently explain why work on the Travel Charger necessitated delay on every aspect of the Eco-Charger. See In re Nelson, 420 F.2d 1079, 1081 (CCPA 1970) (“we must consider the evidence only as it relates to the specific invention claimed”). We therefore look to Owner’s Respondent Brief and the second ’833 McGinley § 131 Declaration for evidence of the first date work was shown to be performed specifically on the Eco-Charger. 8 Inventor McGinley states that Design Verification Testing was performed for the blade and clamshell enclosure of the Travel Charger during the period spanning July through September of 2007. Second ’833 McGinley Decl. ¶ 12. He continues, 8 At oral arguments Counsel for Owner acknowledged that he did not know the date on which work was initiated specifically for the Eco-Charger. ’7294 Tr. 59. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 63 “[o]nce the [testing] on the travel charger was completed successfully, efforts continued with the Eco-version.” Id. That is, we understand Mr. McGinley to be stating that work was first performed specifically on the Eco-Charger (as opposed to work on aspects of the Travel Charger that may somehow have “relevance” to the Eco-Charger) no earlier than September 2007. This is more than a month after the July 24, 2007 filing date of Tracy. Accordingly, we agree with Requester that Owner has failed to establish diligence in reducing the invention to practice prior to the §102(e) date of Tracy. We therefore do not sustain the Examiner’s decision to not adopt the anticipation rejection of claims 1, 2, 6, and 10 over Tracy, as proposed in Basis of Invalidity 16. Rather, because Owner presents no arguments regarding the merits of the Tracy rejection, instead limiting the arguments on appeal regarding Tracy to those of priority (PO Resp. Br.13- 14), we summarily reject claims 1, 2, 6, and 10 under 35 U.S.C. § 102(e) as being anticipated by Tracy. Regarding the obviousness rejection of claims 7-9 and 56-58 based upon the combination of Tracy and Kubo, we have already explained supra that Owner has failed to demonstrate timely conception for all of the subject matter contained within these claims. However, because we also find that Owner has failed to establish diligence in reducing the invention to practice during at least the period preceding the filing of Tracy, for this additional reason we likewise do not sustain the Examiner’s decision to not adopt the obviousness rejection of claims 7-9 and 56-58 based upon the combination of Tracy and Kubo as recited in proposed Basis of Invalidity 17. See PO Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 64 Resp. Br. 14-15 (arguing the impropriety of the proposed rejection over Tracy solely based on the issue of priority). We next address whether Requester sufficiently demonstrates Owner failed to exercise diligence in reducing the claimed invention to practice from at least prior to the more recent November 21, 2007 filing date of Darby. Requester contends the entries in Owner’s Reduction to Practice Summary Exhibit that extend from July 14, 2007 until approximately January 14, 2008 “each fail to refer to a switch or an Eco-Charger or the alleged invention of the ‘833 Patent except for Exhibit C, dated November 1, 2007, which refers to a patent search for a device for reducing phantom load.” 3PR App. Br. 16. Requester does not dispute that reducing phantom load is relevant to the presently claimed invention. Id. Nor does Requester allege that the e- mail of Exhibit C failed to address any particular claim limitations. Id. Furthermore, Requester does not explain why, nor cite any authority for the proposition that, planning a patent search cannot constitute an activity that evidences diligence in reduction to practice. We find, then, that Exhibit C evidences the inventors commenced reducing to practice the claimed subject matter of the ’833 Patent at least as early as November 1, 2007—a date prior to the filing dates of Darby and Bȧgenholm. Requester also states that Exhibit K2, dated January 14, 2008, references switches and cable devices, presumably acknowledging acts towards the reduction to practice of the present invention. 3PR App. Br. 17. However, Requester contends that entries in Owner’s Reduction to Practice Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 65 Summary Exhibit indicate that “the ongoing evidence of development towards reduction to practice of [the independent claim] is sporadic.” Id. Requester’s general assertion—that ongoing evidence of Owner’s development is sporadic—is not a sufficiently specific allegation of any particular breach in diligence. Owner’s Reduction to Practice Summary Exhibit contains roughly 86 exhibits spanning the period between the January 14, 2008 date of Exhibit K2 and Owner’s constructive reduction to practice date May 27, 2008. Red. to Pract. Summ. Ex. 3-4. Such a broad statement by Requester does not satisfy a party’s duty to identify an error in order for the Board to consider it on appeal. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010). We therefore limit our review to Requester’s following arguments that are more specific allegations of breaches in diligence. Requester specifically asserts that Exhibit O3, dated March 17, 2008 for example, refers to a project kick-off date of March 24, 2008. In addition, from the time of Exhibit T2, an email regarding UL approval dated January 25, 2008, no work was again performed until approximately February 8, 2008 (see Exhibit-1: Reduction to Practice Chart at February 9, 2008). 3PR App. Br. 17. Our review of Exhibit O3 indicates that it consists of (1) a forwarded email cover letter from Plexus employee, Gregg Schilawski, to inventor, Jim McGinley, dated March 18, 2008, describing an attached Proposal for work on relating to the Eco-charger; and (2) a nine-page Proposal for Development dated March 17, 2008. While page 5 of the proposal does set forth a March 24, 2008 Kick-Off date, we understand that to be the date Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 66 Plexus proposed for the start of their efforts under the proposal. Requester does not explain how this fact indicates a breach in diligence. We next consider Requester’s allegation that Owner’s Reduction to Practice Summary Exhibit demonstrates that no work was performed for approximately two weeks between Friday, January 25, 2008 and Friday, February 8, 2008. Towards this end, we consider Exhibits V2, W2, and X2. Exhibit V2 is an email chain containing multiple correspondences among various employees of Plexus and Jim McGinley regarding questions regarding the Eco-Charger switch. Ex. T2. The e-mail chain evidences that ongoing attempts at communication among the parties spans the period of Friday, January 25, 2008 and Friday February 1, 2008. The particular e-mail from Gregg Schilawski to Jim McGinley date stamped Friday, February 1, 2008 9:14 AM also indicates that communications were inhibited by a “few days of snow storms.” Id. Exhibit W2 is an e-mail from Gregg Schilawski to Jim McGinley and Don Rimdzius date stamped Wednesday, February 6, 2008 8:43 AM. The e- mail states Mr. Schilawski “was able to get an engineer in our Raleigh Design Center available to help specify the cable,” and that this engineer was working on contacting suppliers of cables. Ex. W2. This e-mail implies that Mr. Schilawski spent time during the first half of the week to resolve the problem of available human resources that was discussed in the e-mail chain of Exhibit V2. This e-mail further implies that the engineer, Adam Elias, had started working on the problem associated with the switches and cables that were discussed in the e-mail chain of Exhibit V2. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 67 Exhibit X2 includes an e-mail chain routed among Adam Elias, Gregg Schilawski, Jim Hoch, Jim McGinley, and Don Rimdzius. Ex. X2. The e- mail chain spans the period of Thursday February 7, 2008 and Friday, February 8. Id. The initial message from the Plexus engineer, Adam Elias, time stamped Thursday February 7, 2008 8:33 AM states “I’ve completed my analysis and it is located here:” and is followed by a hyperlink to a document entitled “Cable_Switch_Concept_revA.pdf.” Id. The e-mail further discusses issues relating to Class I and Class II cables. Id. As such, this e-mail implies that Engineer Elias spent the period of roughly the preceding week addressing the concern about cables for the Eco-Charger that was raised by UL employee, Michelle Hahnlein, on Friday January, 25, 2008. See Ex. T2. To summarize, then, we find that Exhibits T2, V2, W2, and X2, which are referenced by Owner’s Reduction to Practice Summary Exhibit, reasonably demonstrate activity during the two-week period of January 28, 2008 to February 9, 2008. Requester does not sufficiently allege or establish why these various activities evidence an unreasonable delay that would breach Owner’s diligence in reducing the invention to practice. Accordingly, Requester has failed to establish that Owner is not entitled to priority back to at least before November 21, 2007—prior to the relevant filing dates of Darby and Bȧgenholm. As such, we sustain the Examiner’s decision to not adopt the anticipation rejection of claims 1, 11, 20 and 21 over Bȧgenholm, as proposed in Basis of Invalidity 11. We likewise sustain the Examiner’s decision to not adopt the obviousness Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 68 rejection over Darby in view of Menas of claims 1, 2, 6, 11, 16, and 17, as proposed in Basis of Invalidity 12. Conclusions Regarding Priority Owner has not established conception at a time preceding the filing date of Tracy for the claim limitation pertaining to the cable that includes two pairs of wires. This limitation appears in dependent claim 7, as well as in independent claim 56. Accordingly, we do not sustain the Examiner’s decision to not adopt proposed Basis of Invalidity 17. Because Owner presented no arguments regarding the merits of the proposed rejection over the combination of Tracy and Kubo, we summarily reject claims 7-9 and 56- 58 under 35 U.S.C. § 103(a) as obvious over Tracy in view of Kubo. We designate this rejection as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.77(a). Owner has not established diligence in reducing the present invention to practice from a time preceding the filing date of Tracy. Accordingly, we do not sustain the Examiner’s decision to not adopt proposed Basis of Invalidity 16. Because Owner presented no arguments regarding the merits of the proposed rejection over Tracy, we summarily reject claims 1, 2, 6, and 10 under 35 U.S.C. § 102(e) as anticipated by Tracy. We designate this rejection as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.77(a). Requester has not established Owner lacked diligence in reducing the present invention to practice from a time preceding the filing dates of Bȧgenholm or Darby. Accordingly, we sustain the Examiner’s decision to not adopt proposed Bases of Invalidity 11 and 12. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 69 CONCLUSIONS Owner has persuaded us that the Examiner failed to establish that Yang discloses “circuitry for converting the input power voltage to the output power voltage,” as recited by independent claim 11. Accordingly, we do not sustain the adopted anticipation rejection of claims 11, 14, and 20 over Yang, as set forth in BI–1. We likewise do not sustain the obviousness rejection of claims 15 and 16 over Yang in view of Dettweiler, as set forth in BI–5; the obviousness rejection of claim 17 over Yang in view of Nguyen, as set forth in BI–6; the obviousness rejection of claim 18 over Yang in view of Suzuki, as set forth in BI–7; or the obviousness rejection of claim 19 over Yang in view of Suzuki, as set forth in BI-20. The Examiner has not demonstrated sufficient reasoning to combine the Odaohhara’s circuitry into the adaptor of Yang. Accordingly, we do not sustain the obviousness rejection of claims 1, 4-6, 10, 12, and 21-23 over Yang in view of Odaohhara, as set forth in BI–2. We likewise do not sustain the rejection of claims 7-9 and 56-58 over Yang in view of Odaohhara and Kubo, as set forth in BI–3; or the obviousness rejection of claim 13 over Yang in view of Odaohhara and Ray, as set forth in BI–4. The Examiner has not demonstrated that Bhogal’s power supply draws “zero” power when in the “off” state. Accordingly, we do not sustain the obviousness rejection of claims 1, 4-6, and 10 over Bhogal in view of Odaohhara, as set forth in BI–13. We likewise do not sustain the obviousness rejection of claims 7-9 and 56-58 over Bhogal in view of Odaohhara and Kubo, as set forth in BI–14. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 70 Owner has not persuaded us of error in the Examiner’s anticipation rejection of independent claim 1 over Menas. Accordingly, we sustain the Examiner’s rejection of that claim, as well as the rejection of dependent claims 2 and 3. With regard to Requester’s cross-appeal of the non-adopted rejections, and for the reasons for which we do not sustain the Examiner’s rejections based upon Yang, we likewise do not sustain (1) the obviousness rejection of claims 24, 26, 33, 34 and 37 over Yang in view of Arima, as proposed in BI–21; (2) the obviousness rejection of claim 25 over Yang in view of Arima and Dettweiler, as proposed in BI–22; (3) the obviousness rejection of claim 27 over Yang in view of Arima and Suzuki, as proposed in BI–23; (4) the obviousness rejection of claim 35 over Yang in view of Arima and Kim, as proposed in BI–24; (5) the obviousness rejection of claim 36 over Yang in view of Arima in view of Kalin, as proposed in BI–25; (6) the anticipation rejection of claim 33 over Yang, as proposed in BI–26; or (7) the alternative obviousness rejection of claim 33 over Yan in view of Owner’s admitted prior art, as proposed in BI–27. Requester has not persuaded us Hoeyer discloses that the power or load being drawn is determined by measuring the duty cycle or frequency of the pulses. Accordingly, we sustain the Examiner’s Decision to not adopt the rejection of claims 33-35 over Watanabe in view of Hoeyer, as proposed in BI–28. Owner has not established conception at a time preceding the filing date of Tracy for the claim limitation pertaining to the cable that includes two pairs of wires. This limitation appears in dependent claim 7, as well as Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 71 in independent claim 56. Accordingly, we do not sustain the Examiner’s decision to not adopt proposed Basis of Invalidity 17. Because Owner presented no arguments regarding the merits of the proposed rejection over the combination of Tracy and Kubo, we summarily reject claims 7-9 and 56- 68 under 35 U.S.C. § 103(a) as obvious over Tracy in view of Kubo. We designate this rejection as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.77(a). Owner has not established diligence in reducing the present invention to practice from a time preceding the filing date of Tracy. Accordingly, we do not sustain the Examiner’s decision to not adopt proposed Basis of Invalidity 16. Because Owner presented no arguments regarding the merits of the proposed rejection over Tracy, we summarily reject claims 1, 2, 6, and 10 under 35 U.S.C. § 102(e) as anticipated by Tracy. We designate this rejection as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.77(a). Requester has not established Owner lacked diligence in reducing the present invention to practice from a time preceding the filing dates of Bȧgenholm or Darby. Accordingly, we sustain the Examiner’s decision to not adopt the proposed rejection of claims 1, 11, 20, and 21 over Bȧgenholm, or the proposed rejection of claims 1, 2, 6, 11, 16, and 17 over Darby in view of Menas, as set forth in Bases of Invalidity 11 and 12. Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 72 DECISION The Examiner’s decision rejecting claims 1-3, 6, 11, 16, 17, 20, 21, and 56-58 is affirmed. The Examiner’s decision rejecting claims 4, 5, 7-10, 12-15, 18, 19, 22, and 23 is reversed. The Examiner’s decision to not reject claims 24-37 is affirmed. Pursuant to 37 C.F.R. § 41.77(a), the following rejections constitute new grounds: (1) The anticipation rejection of claims 1, 2, 6, and 10 over Tracy, as proposed in BI-16; (2) The obviousness rejection of claims 7-9 and 56-68 over Tracy in view of Kubo, as proposed in BI-17. Section 41.77(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 73 entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED IN PART Appeal 2014-007294 Control No. 95/002,365 US Patent No. 7,910,833 B2 74 alw Patent Owner: Jerold I. Schneider Schneider Rothman IP Law Group 4651 North Federal Highway Boca Raton, FL 33431 Third Party Requester: Ketan S. Vakil Snell & Wilmer 600 Anton Blvd., #1400 Costa Mesa, CA 92626 Copy with citationCopy as parenthetical citation
