Ex Parte 7910833 et al

Patent Trials and Appeals Board

Dec 9, 2014

95002365 - (S) (P.T.A.B. Dec. 9, 2014)

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 00073-0003 2612
86022 7590 12/10/2014
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
12/10/2014 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.

CORRECTED DECISION ON APPEAL
This Corrected Decision—issued in response to Owner’s Petition for
Correction of Clerical Error, filed November 26, 2014—vacates and
supersedes the Panel’s Decision on Appeal, mailed October 28, 2014. Pages
6 and 71-73 of this Corrected Decision clarify which rejections are affirmed
or reversed and which claims are subject to new grounds of rejection.
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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.
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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.
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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.
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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.
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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 56-58 as obvious over
Tracy in view of Kubo (see BI–17).

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).
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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.
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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).

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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
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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
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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
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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
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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
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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.
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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
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“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.”
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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
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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
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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
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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
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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
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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
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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):
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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.
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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.
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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
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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
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’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
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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.
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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.
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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.
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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.
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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
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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.

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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.
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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:

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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
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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
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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.

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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
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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).
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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).
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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
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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.
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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).

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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.
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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,
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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
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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).
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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
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’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.”
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’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
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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.
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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
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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
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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.”
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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.
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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
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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)).
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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,
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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).
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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.
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“[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
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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
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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
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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.
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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
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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.
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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.
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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
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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.

DECISION
The Examiner’s decision rejecting claims 1-3 is affirmed.
The Examiner’s decision rejecting claims 4-23 is reversed.
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The Examiner’s decision to not reject claims 24-27 and 33-37 is
affirmed.
The Examiner’s decision to not reject claims 6-10 and 56-58 is
reversed.
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 56-58 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
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.
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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
37 C.F.R. § 41.77(b)

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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