Ex Parte 7960648 et al

Patent Trial and Appeal Board

Oct 27, 2014

95002378 (P.T.A.B. Oct. 27, 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.
95/002,378 09/14/2012 7960648 57378-0010 7563
86022 7590 10/27/2014
Jerold I. Schneider
Schneider Rothman IP Law Group
4651 North Federal Highway
Boca Raton, FL 33431
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/27/2014 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 2014-006493
Reexamination Control 95/002,378
Patent US 7,960,648 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DAVID M. KOHUT, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
This proceeding arose from a request by Superior Communications,
Inc. for an inter partes reexamination of U. S. 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) (“the ’648 Patent”). We have jurisdiction under 35 U.S.C.
§§ 134(c) and 315(b).
The ’648 Patent describes the invention as follows:
A cable assembly for use with any power cable for an
electrical device, the cable assembly including a remotely
locatable switch for connecting or disconnecting the electrical
device from power draw. Also, a cable assembly for a power
device such as a charger for providing output power to an
electronic device is disclosed, the cable assembly including two
pairs of wires wherein a first pair provides output power for the
electronic device and a second pair includes a switch for turning
off the charger. The cable assembly allows the switch to be
located remotely from a charger housing for the converter
circuitry and remotely from a power source such as an outlet,
and allows the switch to be generally co-located with and
operable at the connector for connecting the power device with
the electronic device.
Abstract.
Independent claim 26, reproduced below, is illustrative of the claimed
subject matter:
26. In combination with an electrical device, a cable
assembly for connecting and disconnecting electrical power to
the electrical device, the system comprising:
an input portion for connection with a power source for
receiving input electrical power;
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a converter portion including converter circuitry for
converting electrical power; and
switch circuitry for controlling an on and an off state for
the system, wherein the switch circuitry automatically
disconnects the input electrical power to switch the system to
the off state in response to a reduced power state of the
electrical device,
wherein the cable assembly consumes substantially no
power while in the off state.
Independent claim 34 substantially mirrors claim 26, but alternatively
recites “wherein the switch circuitry automatically connects the input
electrical power to switch the system to the on state.” The two remaining
independent claims, claims 43 and 48, are discussed in more detail infra.
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 26-30, 34-38, 42, 43, and 48
over the prior art.
1
Third Party Requester and Respondent, Superior

1
Throughout this opinion, we refer to (1) the Request for Inter Partes
Reexamination filed September 14, 2012 (“Request”); (2) Requester’s
Comments after Action Closing Prosecution filed July 3, 2013
(“Comments”); (3) the Right of Appeal Notice mailed August 2, 2013
(“RAN”); (4) Patent Owners’ Appeal Brief filed November 4, 2013
(“PO App. Br.”); (5) Requester’s Appeal Brief filed November 5, 2013
(“3PR App. Br.”); (6) Owner’s Respondent Brief filed December 4, 2013
(“PO Resp. Br.”); (7) Requester’s Respondent Brief filed December 4, 2013
(“3PR Resp. Br.”); (8) the Examiner’s Answer mailed January 30, 2014
(incorporating portions of the RAN by reference) (“Ans.”); (9) Requester’s
Rebuttal Brief filed February 28, 2014 (“3PR Reb. Br.”); (10) the § 131
Declaration of Mr. James McGinley dated January 31, 2013 (“the first ’648
McGinley Decl.”); (11) the § 131 Declaration of Mr. James McGinley dated
June 3, 2013 (“the second ’648 McGinley Decl.”); (12) the § 132
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Communications, Inc. (“Requester”), urges that the Examiner’s decision
rejecting these claims should be affirmed. See generally 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 26-29, 31-36, 38-42, 45-48, and
50-52 over proposed prior art. See generally 3PR App. Br. 3; 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 2014-007294 in inter partes reexamination
95/002,365 arose from a request by Superior Communications for an inter
partes reexamination of US Patent 7,910,833 B2, also titled “ENERGY-
SAVING POWER ADAPTER/CHARGER” (issued to Valerie L.
McGinley et al. on Mar. 22, 2012 from Application 12/127,592, filed May
27, 2008; which is the parent of the present ‘648 continuation-in-part Patent)
(“the ’833 patent”). Appeal 2014-007812 in inter partes reexamination
95/002,374 arose from a request by Superior Communications for an inter
partes reexamination of U. S. Patent 8,242,359 B2, also titled “ENERGY-
SAVING POWER ADAPTER/CHARGER” (issued to Valerie L.

Declaration of Dr. John M. Tobias dated June 3, 2013 (“the ’648 Tobias
Decl.”); and (13) the § 132 Declaration of Dr. William Milton Gosney dated
July 3, 2013 (“the ’648 Gosney Decl.”). The noted McGinley, Tobias, and
Gosney Declarations are to be distinguished from the Declarations filed in
the related re-examinations of the ’833 Patent and the ’359 Patent.
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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”).
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 2014-007294, PO App. Br. 1 (filed Nov. 4, 2013); and PTAB
Appeal 2014-007812, 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.
Pursuant to our authority under 37 C.F.R. § 41.77(a), we enter two
new grounds of rejection, rejecting claims 43 and 45-47 under 35 U.S.C.
§ 112, ¶¶ 1 and 2 (pre-AIA).

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STATEMENT OF THE REJECTIONS
Claims 1-52 are subject to reexamination. Requester’s App. Br. 2.
Claims 26-30, 34-38, 42, 43, and 48 stand rejected. Id. 3. Claims 31-33, 39-
41, and 50-52 remain allowed. Id. Claims 1-25, 44, and 49 have been
canceled. Id. 2.
Owner appeals the following Bases of Invalidity (“BI”) of claims 26-
30, 34-38, 42, 43, and 48, which the Examiner adopted (see PO App. Br. 4-
29):
BI-1. Claims 26-28, 34, 35, 38, and 42 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Yang (WO 2007/027063 A1;
published Mar. 8, 2007).
BI-6. Claims 26-29, 34-36, 38, and 42 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Rengan (US 6,204,637 B; issued Mar. 20,
2001).
BI-21. Claims 43 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yang in view of Nelson (US 7,560,907 B2; issued July 14,
2009).
BI-10. Claim 48 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Unger (US 2008/0130340 A1; published June 5, 2008) in view of
Suzuki (US 6,489,725 B1; issued Dec. 3, 2002).
BI-11. Claims 26-29, 34-36, and 42 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Bhogal (US 2007/0300089 A1; published Dec.
27, 2007).
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BI-12. Claims 30 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bhogal in view of Odaohhara (US 6,986,067 B2;
issued Jan. 10, 2006).
BI-14. Claim 48 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bhogal in view of Suzuki (US 6,489,725 B1; issued Dec. 3,
2002).

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 26-29, 31-36, 39-42, 45-48,
and 50-52 (3PR App. Br. 5-6):
BI-5. Claims 26-29, 34-36, 38, 42, and 48 are asserted to be anticipated
under 35 U.S.C. § 102(e) by Bȧgenholm (US 7,923,869 B2; issued
Apr. 12, 2011).
BI-9. Claims 26-29, 34-36, 38, 42, and 48 are asserted to be obvious under
35 U.S.C. § 103(a) over Brown (GB 2,438,655; published Dec. 5,
2007) in view of Menas (US 2006/0202557 A1; published Sept. 14,
2006).
BI-15. Claims 31-33 and 39-41 are asserted to be anticipated under
35 U.S.C. § 102(b) by Yang.
BI-16. Claims 31-33 and 39-41 are asserted to be obvious under 35 U.S.C.
§ 103(a) over Yang in view of Owner’s admitted prior art.
BI-17. Claims 31-33 and 39-41 are asserted to be obvious under 35 U.S.C.
§ 103(a) as being unpatentable over Bhogal in view of Makino
(US 2007/0047270 A1; published Mar. 1, 2007).
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BI-18. Claims 45-47 are asserted to be obvious under 35 U.S.C. § 103(a) as
being unpatentable over Bhogal in view of Nelson (US 7,560,907 B2;
issued July 14, 2009) and Makino.
BI-19. Claims 50-52 are asserted to be obvious under 35 U.S.C. § 103(a) as
being unpatentable over Bhogal in view Suzuki, and Makino.
BI-20. Claims 45-47 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 Nelson and Hoeyer (EP 1473813 B1; published Mar, 16,
2005).
We first address a question of claim interpretation. We next address
two issues arising under 35 U.S.C. § 112, ¶¶ 1 and 2. We then turn to
Owner’s appeal of the adopted rejections, as well as Requester’s cross
appeal of the non-adopted rejections.

CLAIM PREAMBLE INTERPRETATION
The preamble of each of the independent claims, claims 26, 34, 43,
and 48, recites “In combination with an electrical device, a cable assembly
for connecting and disconnecting electrical power to the electrical device,
the system comprising:” (emphasis added). This recitation is problematic
because insufficient antecedent basis exists for the term, “the system,” and it
is not reasonably clear what metes and bounds of claim protection are
intended to be covered by the term.
It may be that “the system” is intended to refer to the combination of
the electrical device and the cable assembly. It may alternatively be that
“the system” is intended to refer to the cable assembly alone. Or it may be
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the case that the recitation of “the system” is, in fact, intended to refer to
some undefined structure other than the cable assembly.
At oral hearing, Counsel for Patent Owner acknowledged that the
claims contain an error (‘6493 Tr. 4), but urges that the proper construction
of the preamble should be “In combination with an electrical device, a cable
assembly for connecting and disconnecting electrical power to the electrical
device, [ ] the combination comprising:” (id. at 4-5).
In response to the questioning of Owner’s Counsel on this matter,
Counsel for Requester urges that Patent Owner should be required to amend
the claims to fix the above-noted error. ‘6493 Tr. 11. We agree that drafting
mistakes such as this one should be corrected. However, from an appeal
standpoint, we see no difference which interpretation is adopted. Any prior
art that reasonably discloses, teaches, or suggests a charger as claimed that is
adapted for charging an electronic device, would almost inevitably
additionally render unpatentable the charger in further combination with the
electronic device. The primary ambiguity with the claims seems to be more
relevant to questions of infringement because it could make a difference
whether one literally infringes the claim by making, selling, or using merely
the claimed charger, or whether one would have to additionally make, sell,
or use an electronic device in combination with the claimed charger.
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For the purposes of the present appeal, then, we will simply apply the
broadest interpretation that is reasonable in light of the noted ambiguity.
That is, we understand the claims to be reciting a combination of an
electrical device and a cable assembly, and we further understand “the
system” to be a synonym for the combination of these two components.
We do recognize that while many dependent claims recite “[t]he
combination of [the independent or parent claim]” (emphasis added) (e.g.,
dependent claims 27-30), some dependent claims alternatively recite “[t]he
cable assembly as recited in [the independent or parent claim]” (emphasis
added) (e.g., dependent claims 31-33). This fact does not change our
conclusion as to what constitutes the broadest reasonable interpretation. The
latter claims merely set forth further details regarding the cable of the
combination, whereas the additional details of the former claims may, at
least in theory, be present anywhere in the combination.

CLAIMS 43 AND 45-47
Principles of Law
The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of
carrying out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention. . . .
35 U.S.C. § 112, ¶¶ 1 and 2.
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Analysis
Independent claim 43 has been amended during the course of the
reexamination proceeding to add an additional limitation. See amendment
filed June 6, 2013. The claim reads as follows, with the added limitation
emphasized:
43. In combination with an electrical device, a cable
assembly for connecting and disconnecting electrical power to
the electrical device, the system comprising:
an input portion for connection with a power source for
receiving input electrical power;
a converter portion including a transformer and converter
circuitry for converting the input electrical power to output
electrical power;
sensing circuitry for measuring current drawn from the
cable assembly by the electrical device; and
switch circuitry for switching the cable assembly
between a fully-powered state and a reduced power state,
wherein the switch circuitry automatically switches the cable
assembly to the reduced power state in response to a reduced
current draw by the electrical device and without regard to an
output voltage of the cable assembly, the switch circuitry
disconnecting power from the transformer when in the reduced
power state,
wherein, when the cable assembly is in the reduced
power state, the power consumed by the cable assembly is on
the order of microwatts.
For the following reasons, we exercise our authority pursuant to
37 C.F.R. §§ 1.906(a) and 41.77(a) so as to newly reject claims 43 and
45-47 under 35 U.S.C. § 112, ¶¶ 1 and 2, for lacking adequate written
description, as well as for indefiniteness.
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Owner’s entire invention is directed towards ways of reducing or
preventing phantom load within a power supply that otherwise would be
present when the power supply is in the “off” state. See, e.g., ’833 Patent,
the Background sections of the ’833 Patent and the present, ‘648 Patent. In
Owner’s own words,
the person of ordinary skill in the art knows that “off” does not
always mean “off” . . . . A household appliance, such as a
vacuum cleaner, coffee maker or other device that includes for
example a transformer “sparks” when being plugged into a wall
socket or when the plug is withdrawn from the wall socket even
if the switch on the appliance is “off.”
PO App. Br. 6-7. In other words, the various embodiments of the present
invention are directed to fine gradations of what would otherwise all be
more generally considered simply to constitute an “off” state.
In fact, the Specification of Owner’s ’359 Patent provides distinct
categories of ways in which a power supply can be deemed to be “off.”
2
See
’359 Patent, col. 10, ll. 59-63 (explaining “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”) (emphasis added). That is, the Specification sets forth
a clear distinction between no power consumption, on the one hand, and
“reduced” or low-power consumption, on the other. See, e.g., ’359 Patent,
col. 6, ll. 42-46 (distinguishing a reduced power draw from a device that is
shut off).

2
The Specification of the ’359 Patent is substantially identical to that of the
parent, ’833 Patent.
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“No power consumption” is further defined with its own objective
standards. Power draw is either “zero” or “negligible” when it is small
enough to be measured in microwatts. Col. 6, ll. 61-62. Owner repeatedly
emphasizes on appeal that “zero power” or “negligible power” is only
achievable by using a hard or mechanical switch, such as a toggle or rocker
switch—not an electronic or solid state switch. See, e.g., PO App. Br. 7-8;
‘7812 PO App. Br. 7-8. Circuits that use solid state switches, such as those
in the Figure 8 embodiment of the ’359 Patent, are merely able to cause the
phantom load to be reduced or “virtually eliminated” ’359 Patent, col. 8,
ll. 40-43. But Owner maintains that even such ultra-low power
consumptions do not constitute “zero” power consumption. See, e.g.,
PO App. Br. 8; ‘7812 PO App. Br. 7-8.
At oral argument, Counsel for Owner urges “when we’re talking
about zero or negligible or any of those terms, [substantially, reduced, low,
and virtually eliminated], we’re talking about the order of microwatts.”
‘7294 Tr. 15. However, as explained supra, the Specifications expressly
distinguish “no” and “negligible” power from “reduced” and “virtually
eliminated” power. The Specifications define the former two terms as being
limited to power on the order of microwatts—or as Counsel for Owner
explains, “some level [at which] you might be able to measure something
with some instrument of enormous cost, complexity, and sensitivity.” Id. at
14-15. The Specifications do not limit the latter two terms to microwatts or
any other specific level, though. In fact, the Specifications do not disclose
any reduced-power embodiment that is capable of consuming merely
microwatts of power. Instead, “reduced power” reasonably seems to read on
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any power level that is less than what would be achieved if the power saving
feature were not present.
To summarize, then, the newly added limitation of independent claim
43 first sets forth the condition that the cable assembly is in a reduced power
state—not in a no power state. The newly added limitation then
alternatively goes on to require that when the cable assembly is in this
reduced power state, the power consumed by the cable assembly is limited
effectively to zero—a power level so low that, according to Owner, it cannot
be achieved by an embodiment that merely causes the power to be reduced.
This paradox begs the question of how a cable assembly can operate in a
positive, albeit reduced, power state so as to consume effectively zero
power.
In Philips, our reviewing court held that “the Specification is the
single best guide to a disputed term’s meaning and acts as a dictionary when
it expressly defines terms recited in the claims.” Phillips v. AWH Corp.,
415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (internal quotation marks
and citations omitted). We find, though, that none of the Specifications
associated with the present three related appeals defines the term
“substantially.” In fact, the term substantially was never even contained in
the originally filed Specification of the ’833 Patent. Rather, the term was
later incorporated into the ’833 Patent by a claim amendment filed
November 5, 2010. See issued claims 40 and 51 (originally designated as
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amended claim 25 and new claim 50, respectively, when the term
“substantially” was added by amendment).
3

Furthermore, none of the three Specifications recites any embodiment
of a charger or any example of a cable assembly that consumes no power
while simultaneously operating in a reduced power state. At best, the
Specifications disclose embodiments of the invention wherein power is
temporarily provided to the cable assembly and/or charger and subsequently
disconnected based upon indications regarding the presence and/or charge
level of the electrical device. See, e.g., col. 5, l. 29 – col. 5, l. 21. However,
as was already noted supra, the ’833 Patent and the ’359 Patent expressly
distinguish intermittent power from reduced or low power. See ’833 Patent,
col. 10, ll. 45-49; ’359 Patent, col. 10, ll. 59-63.
As such, it is not reasonably clear whether independent claim 43
intends to recite a cable assembly that operates at least in a reduced power
state, operates in a no power state, operates in an intermittent power state, or
simultaneously operates in a reduced power and no power state.
Furthermore, if claim 43 is intended to be directed to a cable assembly that
simultaneously operates in a reduced power and no power state, it is not
reasonably clear what metes and bounds of claim protection are intended to
be covered by such a requirement. Accordingly, we reject claim 43, as well

3
In our related ’7812 Decision we found that the claim term “substantially
no power” is broader than the terms “no power” or “negligible power.”
’7812 Dec. 23-27. Moreover, we interpreted “substantially no power” to be
synonymous with “reduced power” and to mean “any power consumption
level that is less than what would be achieved if the power saving feature
were not present.” Id. at 26.

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as dependent claims 45-47, under 35 U.S.C. § 112, ¶ 2, for indefiniteness.
See MPEP 2173.05(c)(I) (discussing how the presence of a narrow range and
a broader range within the same claim can lead to undue confusion as to the
intended metes and bounds of a claim).
Furthermore, as noted supra, the originally filed Specification of the
‘648 Patent does not set forth any embodiment of a cable assembly that
consumes zero power while simultaneously operating in a reduced power
state. Accordingly, we reject claims 45-47 under 35 U.S.C. § 112, ¶ 1, for
lacking adequate written description.

ADOPTED BI–21: RENGAN IN COMBINATION WITH NELSON AND
NON-ADOPTED BI–20: WATANABE IN COMBINATION WITH
NELSON AND HOEYER
Because claims 43 and 45-47 are so indefinite that “considerable
speculation as to [the] meaning of the terms employed and assumptions as to
the scope of such claims” is needed (see supra), we do not address the merits
of the Examiner’s rejection of independent claim 43 under 35 U.S.C.
§ 103(a) over Rengan in view of Nelson. See In re Steele, 305 F.2d 859,
862, (CCPA 1962) (holding that the Examiner and the Board were wrong in
relying on what, at best, were speculative assumptions as to the meaning of
the claims and in basing a prior-art rejection thereon). We therefore pro
forma do not sustain the Examiner’s rejection of this claim.
For the same reasons, we likewise sustain pro forma the Examiner’s
decision to not adopt the proposed rejection of claims 45-47 under 35 U.S.C.
§ 103(a) over Watanabe in view of Nelson and Hoeyer.
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ADOPTED BI–1: YANG
The Examiner rejects independent claims 26 and 34, as well as
dependent claims 27, 28, 35, 38, and 42, under 35 U.S.C. § 102(b) as
anticipated by Yang. RAN 6 (incorporating by reference the proposed
rejection of the Request at 32-53).
4
The rejection as set forth in the Request
is based upon the position that Yang’s noise removing unit 100 reasonably
may be interpreted as corresponding to “a converter portion including
converter circuitry for converting electrical power,” as recited in each of
independent claims 26 and 34. See, e.g., Request 35; 3PR Resp. Br. 3-4.
This issue is analyzed in some depth in our Opinion for the related
appeal of the parent ’833 Patent.
5
See ‘7294 Dec. 9-21. Rather than repeat
the entirety of that lengthy analysis here, we instead adopt and incorporate
by reference our findings and reasoning regarding the term “convert” as set
forth in that Opinion.
To summarize, though, we conclude that 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

4
The proposed the anticipation rejection over Yang actually appears on
pages 14-52 of the Request. We understand the Examiner to be
incorporating the proposed rejection in its entirety.
5 Claim 11 of the ’833 Patent sets forth “circuitry for converting the input
power voltage to the output power voltage . . .” instead of more simply “a
converter portion including converter circuitry for converting electrical
power,” as in the present claims. See, e.g., claim 26. The variation in the
respective claims’ scopes does not change our analysis and conclusions
regarding the meaning of the claim term “converting.”
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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 the input voltage to the output
voltage,” as recited by the present independent claims. Owner has
persuaded us that the Examiner failed to establish that Yang’s capacitive
filter 100 may be reasonably interpreted as performing the step of
“converting,” as claimed.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of claims 26-28, 34, 35, 38, and 42, as set forth in BI–1.

NON-ADOPTED BI–15 AND BI–16: YANG ALONE AND IN
COMBINATION WITH ADMITTED PRIOR ART
Requester cross appeals the Examiner’s decision to not adopt
proposed Bases of Invalidity BI–15 and BI–16 (3PR App. Br.6-10), which
Requester proposed in relation to claims 31-33 and 39-41 (Comments 26-
29). Both of these proposed rejections are also based upon the position that
Yang’s capacitive filter 100 corresponds to the claimed converter. See, e.g.,
3PR App. Br. 6-10. For the reasons set forth above in relation to Owner’s
appeal of independent claims 26 and 34, we are not persuaded that Yang
discloses a converter portion including converter circuitry for converting
electrical power. Accordingly, we sustain the Examiner’s Decision to not
adopt the following proposed Bases of Invalidity:
BI–15. Claims 31-33, which Requester asserted to be anticipated under
35 U.S.C. § 102(b) over Yang.
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BI–16. Claims 39-41, which Requester asserted to be obvious under
35 U.S.C. § 103(a) over Yang in view of Admitted Prior Art.

ADOPTED BI–6: RENGAN
Owner contends that Rengan does not anticipate independent claims
26 and 34 for several interrelated reasons. PO App. Br. 17-18. Owner’s
reasons are essentially all based upon the position that the claims require a
cable assembly that draws zero power, and that drawing zero power, in turn,
requires some sort of hard switch disposed to shut off power on the primary
side of the transformer. PO App. Br. 16-17; PO Resp. Br. 12-13.
We disagree with this premise. Independent claims 26 and 34 do not
require the cable assembly to consume no power while in the off state. The
claims merely require that “the cable assembly consumes substantially no
power” (emphasis added). As noted supra, we interpret “substantially no
power” to be synonymous with “reduced power” and to mean “any power
consumption level that is less than what would be achieved if the power
saving feature were not present. Owner presents no persuasive arguments
that Rengan fails to at least reduce power consumption.
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claims 26 and 34 over Rengan. For the same reasons, we
likewise sustain the anticipation rejection of dependent claims 27-29, 35, 36,
38, and 42 over Rengan, which are not separately argued. See PO App. Br.
18-19.

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ADOPTED BI–11: BHOGAL
Contentions
Owner contends that Bhogal does not anticipate independent claims
26 and 34 for several interrelated reasons. First, the Switching Logic
Component is on the secondary side of transformer 230[, and t]here is no
evidence that input power to the transformer primary side is ever turned off.”
PO App. Br. 25. Second, “Bhogal does not expressly describe the location
of a switch upstream of the transformer.” Id. “Third, Bhogal does not have
an ‘off state.’” “Fourth, Bhogal does not disclose ‘consumes substantially
no power while in the off state.’” Id.
Analysis
All of Owner’s arguments are based upon the position that the claims
require a cable assembly that draws zero power, and that drawing zero
power, in turn, requires some sort of hard switch disposed to shut off power
on the primary side of the transformer. PO App. Br. 24. As explained in the
preceding discussion of Rengan, though, we disagree with this premise.
Independent claims 26 and 34 merely require that “the cable assembly
consumes substantially no power” (emphasis added). Owner presents no
persuasive arguments that Bhogal fails to at least reduce power
consumption.
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claims 26 and 34 over Bhogal. For the same reasons, we
likewise sustain the anticipation rejection of dependent claims 27-29, 35, 36,
and 42 over Bhogal, which are not separately argued. See PO App. Br. 25-
26.
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ADOPTED BI–12: BHOGAL IN COMBINATION WITH ODAOHHARA
Claims 30 and 37 respectively depend from independent claims 26
and 34. These dependent claims both set forth the same additional
limitation. Claim 30 is illustrative:
30. The combination of claim 26 wherein the cable assembly
includes a connector for removable connection with the
electrical device, the connector having a pair of electrical
conductors for delivering electrical power to the electrical
device and at least one control line for providing an on state for
the system.
Contentions
The RAN adopts and incorporates by reference the obviousness
rejection over Bhogal and Odaohhara as proposed by the Request. RAN 8
(citing Request 185-189). The Request, in turn, explains that Bhogal’s
enhanced power supply 200 is connected to a target electronic device 115 by
means of a power cord 205 and a communications cable 215, which jointly
terminate in receptacle 270. Request 185. The receptacle 270, in turn, is
physically plugged into the target device 115. Id. The Request further
explains how DC power is provided to the target device 115 via power cord
205 (id.), as well as how communications cable 215 is used as a control line
for providing an on state for the enhanced power supply (id. at 185-86).
The Request then sets forth that “Odaohhara discloses a pair of
electrical connectors (V),(GND) for delivering electrical power to an
electronic device” (id. 186), and the reference explains that it would have
been obvious to modify the connector of Bhogal to incorporate a pair of
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electrical connectors . . . to more efficiently deliver power to the electrical
device . . .” (id.).
Owner argues that the proposed modification “ignores the manner of
operation of each of the connectors in each of the respective circuits” of
Bhogal and Odaohhara. PO App. Br. 26. Owner further argues that it is
unclear how Odaohhara is being substituted, speculating that Odaohhara’s
plug/sheath/connector is being substituted for Bhogal’s receptacle 270,
communications cable control contact 280, and power cord contact 275. Id.
at 27. Owner proceeds to argue why such a substitution would be improper.
Id. at 27-28.
Analysis
As a threshold matter, we question whether the additional reliance
upon Odaohhara is actually necessary to demonstrate the unpatentability of
claims 30 and 37. Even though Bhogal does not unambiguously depict a
pair of electrical conductors for delivering electrical power, that does not
mean that Bhogal does not disclose a pair of electrical conductors, or at least
render the provision of a pair of electrical conductors obvious. It has been
held that the anticipation requirement that every element of a claim appears
in a single reference accommodates situations where the common
knowledge of “technologists” is not recorded in a reference, i.e., where
technical facts are known to those in the field of the invention. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Also, it
has been held that 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
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specifically disclose certain features. In re Graves, 69 F.3d 1147, 1152
(Fed. Cir. 1995).
In the present case, we find that one of ordinary skill in the art of
electric power supplies would have understood that Bhogal is not suggesting
that power cord 205 is composed of only a single conductor. Rather, one of
ordinary skill would have understood that within Bhogal’s express
disclosure of a power cord 205 that carries DC power to receptacle 270
(Bhogal, e.g., ¶ 0012) is the further implicit disclosure of two electrical
conductors—a hot conductor and a ground or return conductor. Basic
circuitry principles dictate that both of these conductors would necessarily
have to be present in the power cord in order for it to form a closed circuit
and operate as intended. As such, the obviousness rejection of claims 30 and
37 could be sustained even when based upon Bhogal alone. See In re
Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting that obviousness
rejections can be based on references that happen to anticipate the claimed
subject matter).
Regardless, though, we find no harm in the Examiner further relying
on Odaohhara to reach the conclusion of obviousness. Odaohhara merely
confirms what was implicitly taught by Bhogal—that it was known that a
connector for providing DC power possessed two conductors. See, e.g.,
Odaohhara, FIGs 2 and 3B (both depicting Vacdc conductor 42 and GND
conductor 43).
We are therefore unpersuaded by Owner’s arguments that the
substitution is improper due to the fact that the circuits of Bhogal and
Odaohhara are entirely different. PO App. Br. 27-28. It is reasonably clear
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that Odaohhara is not being relied upon for the specific functioning of its
circuitry, but rather for the teaching that power cords in fact do, or at least
may, possess two conductors. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference.... Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Accordingly, we sustain the obviousness rejection under 35 U.S.C.
§ 103(a) of claims 30 and 37 over Bhogal in view of Odaohhara.

ADOPTED BI–13: BHOGAL IN COMBINATION WITH SUZUKI
Independent claim 48 stands rejected under 35 U.S.C. § 103(a) as
obvious over Bhogal in view of Suzuki. Claim 48 reads as follows:
48. In combination with an electrical device, a cable
assembly for connecting and disconnecting electrical power to
the electrical device, the system comprising:
an input portion for connection with a power source for
receiving input electrical power;
a converter portion including a transformer and converter
circuitry for converting the input electrical power to output
electrical power;
switch circuitry for controlling an on and an off state for
the system, the switch circuitry including a latching relay
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coupled to electrically connect or disconnect power to or from
the transformer.
Contentions
The Examiner adopts Requester’s proposed rejection of independent
claim 48 as obvious over Bhogal in view of Suzuki. RAN 8 (citing Request
197-201). In so doing, the Examiner clarifies that, while the Request
contends that claims 48 and 50-52 are obvious over Bhogal in view of
Suzuki and Makino, “[t]he rejection of claim 48, as originally presented in
the Request, did not in any way rely on Makino.” Id.; see also Request 197
(initially stating in the section heading that claims 48 and 50-52 are obvious
over Bhogal, Suzuki, and Makino, but subsequently stating in the heading of
the claim map that claim 48 is obvious over merely Bhogal and Suzuki
(without Makino)). Makino is relied upon for the additional features of the
pulse monitoring circuitry associated with dependent claims 50-52. Request
201-202.
Requester contends that Bhogal discloses all of the claim limitations
except for a latching relay. Request 197-200. Requester contends that
Suzuki discloses the use of a latching relay in a power saving circuit. Id.
200. Requester urges that it would have been obvious to specifically employ
a latching relay as Bhogal’s switch because Suzuki provides evidence that a
latching relay is operably interchangeable with other switches. Id. 200-01.
Owner disputes Bhogal’s teachings for the same reasons set forth in
relation to the anticipation rejection over Bhogal, pursuant to BI–11. PO
App. Br. 28-29. These arguments are not persuasive for the reasons
discussed hereinabove.
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Owner further argues that “the Request improperly proposes a
modification of a relay (from Suzuki) for a switch of an unidentified type
and unidentified location in the Bhogal document.” Id. 28. Owner contends
that because “Bhogal only discloses ‘switching logic’, and a microprocessor
and suggests electronic switches,” there is no basis to substitute a latching
relay or “hard” switch. Id.
Analysis
Owner’s contention that Bhogal only suggests electronic switches
belies Owner’s alternative argument that Suzuki’s relay is being substituted
for switches that are of unidentified type in unidentified locations. But if we
were to accept Owner’s argument that Bhogal’s switches are of an
unidentified type, then this fact itself would provide adequate motivation for
one of ordinary skill to investigate what specific types of conventional
switches were available at the time.
We also find unpersuasive Owner’s related argument that the rejection
fails to demonstrate that such a substitution would not adversely impact the
operation of the Bhogal device. PO App. Br. 28. The rejection takes the
position that a latching relay was an art-recognized equivalent means of
realizing a switch, and Owner does not dispute that latching relays were
conventionally known forms of switches. As such, the rejection establishes
a prima facie showing of obviousness, and the burden has shifted to Owner
to demonstrate error in the rejection. See Frye, 94 USPQ2d at 1075 (noting
that an appellant may attempt to overcome an examiner’s obviousness
rejection on appeal to the Board by: (A) submitting arguments and/or
evidence to show that the examiner made an error in either (1) an underlying
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finding of fact upon which the final conclusion of obviousness was based or
(2) the reasoning used to reach the legal conclusion of obviousness; or
(B) showing that the prima facie case has been rebutted by evidence of
secondary considerations of nonobviousness.). That is, the burden is on
Owner to demonstrate that the proposed substitution would adversely impact
the operation of Bhogal’s device—not on Requester to demonstrate the
opposite.
Because Owner has not demonstrated error, we sustain the Examiner’s
obviousness rejection of claim 48 over Bhogal in view of Suzuki.

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. 4. 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.
Owner’s request, however, is directed to a petitionable matter, and not
an appealable matter, and is, therefore, not before us. Owner does not cite to
any authority indicating that the determination of an appeal brief’s propriety
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is an appealable matter. To the contrary, the determination of whether an
appeal brief is proper is a petitionable matter.

NON-ADOPTED BI–17 THHROUGH BI–19:
BHOGAL IN COMBINATION WITH MAKINO ALONE OR
IN FURTHER COMBINATION WITH NELSON OR SUZUKI
Requester cross appeals the Examiner’s decision to not adopt
proposed Bases of Invalidity BI–17 through BI–19 (3PR App. Br. 11-15),
which Requester proposed in relation to dependent claims 31-33, 39-41, and
50-52, respectively (Comments 29-33). These three proposed obviousness
rejections consist of the combination of Bhogal and Makino (claims 31-33);
Bhogal, Nelson, and Makino (claims 39-41); and Bhogal, Suzuki, and
Makino (claims 50-52). Comments 29-33. Dependent claim 31 is
illustrative of the additional claim limitation, which is contained in all of the
above-listed claims: “The cable assembly as recited in claim 26 further
comprising: pulse monitoring circuitry operable to monitor the frequency of
pulses and drive the switch circuitry based thereon.”
Contentions
Requester contends that Bhogal, either alone or in combination with
Nelson or Suzuki, teaches all of the limitations of independent claims 26, 34,
and 48, except for the limitation regarding pulse monitoring circuitry, recited
above. Comments 29-33. Requester further contends that Makino teaches
such circuitry and that reasonable motivation existed to combine Makino’s
teachings with the other references. Id. Specifically, Requester urges that
Makino teaches “pulse monitoring circuitry 305 [that] is configured to detect
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a specific high frequency of pulses from the transformer that identifies when
a load is present, or disconnected.” 3PR App. Br. 12 (citing Makino
¶ 0026).
The Examiner did not adopt these proposed rejections because, among
other reasons (see RAN 12-14), in the Examiner’s view Makino does not
monitor the frequency of pulses, but instead “merely senses for the existence
of a signal.” Id. at 14.
Analysis
Makino indicates that “[a] pulsed signal is used to check for the
presence of a load . . . because [the pulsed signal] has high frequency
content. Makino, ¶ 0051. Upon detecting a pulsed signal generated by pulse
generator 303, sensor 305 sends a signal to control 307, which then closes
switch 109, thereby allowing the circuitry to enter the active mode. Id. at
¶ 0049. That is, Makino’s sensor 305 may detect the existence of a signal of
a specified frequency, but Requester has not demonstrated that Makino
monitors the frequency of pulses, as required by each of claims 31, 39, and
50.
At oral argument, Requester argues that Makino’s timer determines
whether a pulse occurs, and Requester further argues that the act of
monitoring whether a pulse occurs is substantively the same thing as
monitoring the frequency of pulses. ’6493 Tr. 14-15. Requester reasons that
this is so because detecting a single pulse is still detecting a specified
frequency: one pulse per unit time. Id. Requester also argues that the
circuits of the type of interest operate in the same manner regardless of
whether one pulse is detected or whether a specified number of pulses per
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unit time is detected—a capacitor in the circuit charges up a switch’s
voltage. Id. at 14.
These arguments are not reasonably persuasive. Even assuming that
the ultimate effect of charging a switch would be the same regardless of the
manner of detection, a substantive difference still would exist between the
two manners of charging the switch. The detecting of a single pulse does
not necessarily have to occur within any specified period of time.
Conversely, monitoring the frequency of pulses does require that one or
more pulses occur within a specified time. Accordingly, Requester has not
established that the Examiner erred in concluding that Makino fails to teach
or suggest monitoring the frequency of pulses. See RAN 10.
6

We therefore sustain the Examiner’s decision to not adopt the
proposed obviousness rejection of claims 31-33 over Bhogal and Makino;
the obviousness rejection of claims 39-41 over Bhogal, Nelson, and Makino;
or the proposed obviousness rejection of claims 50-52 over Bhogal, Suzuki,
and Makino.

6
Because we sustain the Examiner’s finding that Makino does not teach
monitoring the frequency of pulses, we need not address Owner’s further
argument (see ’6493 Tr. 15) that claim 31 additionally requires that
something be done with the information, “[t]hat’s what the examiner found
was missing in the prior art,” and “[t]hat’s what was added to the claim.”
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CONCLUSIONS
We sustain the Examiner’s anticipation rejection of claims 26-29, 34-
36, and 38 over Rengan.
We sustain the Examiner’s anticipation rejection of claims 26-29, 34-
36, and 42 over Bhogal.
We sustain the Examiner’s obviousness rejection of claims 30 and 37
over Bhogal and Odaohhara.
We sustain the Examiner’s obviousness rejection of claim 48 over
Bhogal and Suzuki.
In view of our sustaining the preceding rejections, we do not reach the
following three rejections:
(1) We do not reach the adopted obviousness rejection of claim 48 over
Unger in view of Suzuki, as set forth in BI–10.
(2) We do not reach the non-adopted anticipation rejection of claims 26-
29, 34-36, 38, 42, and 48 over Bȧgenholm, as set forth in BI–5.
(3) We do not reach the non-adopted obviousness rejection of claims 26-
29, 34-36, 38, 42, and 48 over Brown in view of Menas, as set forth in
BI–9.
See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection).
We do not sustain the Examiner’s anticipation rejection of claims 26-
28, 34, 35, 38, and 42 over Yang, as set forth in BI–1.
We sustain the Examiner’s decision to not reject claims 31-33 and 39-
41 as anticipated by Yang, as set forth in proposed BI–15.
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We sustain the Examiner’s decision to not reject claims 31-33 and 39-
41 as alternatively being obvious over Yang in view of Admitted Prior Art,
as set forth in proposed BI–16.
We sustain the Examiner’s decision to not reject claims 31-33 and 39-
41 as obvious over Bhogal in view of Makino, as set forth in proposed BI–
17.
We sustain the Examiner’s decision to not reject claims 39-41 as
obvious over Bhogal in view of Nelson and Makino, as set forth in proposed
BI–18.
We sustain the Examiner’s decision to not reject claims 50-52 as
obvious over Bhogal in view of Suzuki and Makino, as set forth in proposed
BI–19.
We issue new grounds of rejection for claims 43 and 45-47 under
35 U.S.C. § 112, ¶¶ 1 and 2, for lacking adequate written description and for
being indefinite.
Because the metes and bounds of claims 43 and 45-47 are indefinite,
determining whether any given prior art would render these claims
unpatentable would entail undue speculation. Accordingly, we do not
sustain the Examiner’s rejection of claim 43 over Rengan in view of Nelson,
as set forth in BI–11.
For this reason of undue speculation, we also sustain the Examiner’s
decision to not reject claims 45-47 as obvious over Watanabe, Nelson, and
Hoeyer, as set forth in proposed BI–20.
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DECISION
The Examiner’s decision rejecting claims 26-30, 34-38, and 48 is
affirmed.
The Examiner’s decision to not reject claims 31-33, 39-41, and 50-52
is affirmed.
The Examiner’s decision to not reject claims 45-47 as obvious is
affirmed.
The Examiner’s decision rejecting claim 43 as obvious is reversed.
Pursuant to our authority under 37 C.F.R. § 41.77(a), we enter two
new grounds of rejection, rejecting claims 43 and 45-47 under 35 U.S.C.
§ 112, ¶¶ 1 and 2.
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

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for PATENT OWNER:

JEROLD I. SCHNEIDER
SCHNEIDER ROTHMAN IP LAW GROUP
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for THIRD PARTY REQUESTER:

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