Ex Parte 8,242,359 B2 et al

Patent Trial and Appeal Board

Oct 28, 2014

95002374 (P.T.A.B. Oct. 28, 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.
95/002,374 09/14/2012 8,242,359 B2 57378-0012 8488
86022 7590 10/28/2014
Jerold I. Schneider
Schneider Rothman IP Law Group
4651 North Federal Highway
Boca Raton, FL 33431
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/28/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

SUPERIOR COMMUNICATIONS, INC.
Requester and Cross Appellant

v.

VOLTSTAR TECHNOLOGIES, INC.
Patent Owner and Appellant
____________

Appeal 2014-007812
Reexamination Control 95/002,374
Patent US 8,242,359 B2
Technology Center 3900
________________

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

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-007812
Application 95/002,374
US Patent No. 8,242,359 B2

2
SUMMARY
This proceeding arose from a request by Superior Communications,
Inc. for an inter partes reexamination of US Patent 8,242,359 B2, 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 (“the ’374 Patent”). We have jurisdiction under
35 U.S.C. §§ 134(c) and 315(b).
The ’374 Patent describes the invention as follows: “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.” Abstract.
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, 5-8, and 10-20 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 16, 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.
Br.”); (9) the § 132 Declaration of Dr. John M. Tobias dated May 28, 2013
(“the ’359 Tobias Decl.”); and (10) the § 132 Declaration of Dr. William
Milton Gosney dated June 27, 2013 (“the ’359 Gosney Decl.”). The noted
Tobias and Gosney Declarations are to be distinguished from the
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Application 95/002,374
US Patent No. 8,242,359 B2

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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 2-4 and 9 over proposed prior
art. See 3PR App. Br.; 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 ’359 continuation Patent) (“the
’833 Patent”). Appeal 2014-006493 in inter partes reexamination
95/002,378 arose from a request by Superior Communications for an inter
partes reexamination of 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”).

Declarations filed in the related re-examinations of the ’833 Patent and ’648
Patent.
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Application 95/002,374
US Patent No. 8,242,359 B2

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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 2014-006493, PO App. Br. 1 (filed Nov. 4, 2013).
Oral arguments for all three related appeals and associated cross
appeals were held consecutively before a panel of the Board on August 13,
2014. Transcripts of the respective appeals’ arguments (“the ’7294 Tr.,”
“the ’7812 Tr.,” and “the ’6493 Tr.”) are included in the respective records.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm-in-part.

Appeal 2014-007812
Application 95/002,374
US Patent No. 8,242,359 B2

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THE INDEPENDENT CLAIMS
The three independent claims—claims 1, 10, and 17—are illustrative
of the claimed invention:
l. A power device for supplying power to an electronic
device, the power device comprising:
an input for receiving electrical input power from a
source, the input power having an input voltage;
an output for delivering electrical output power to the
electronic device, the output power having an output voltage;
power circuitry for converting the input voltage to the
output voltage; and a latching relay coupled between the input
and the power circuitry, wherein the latching relay is closed to
change the power circuitry to the “on” state and opened to
change the power circuitry to the “off” state, wherein the output
voltage is substantially constant when the power circuitry is in
the “on” state.

10. A power device for supplying power to an electronic
device, the power device comprising:
an input for receiving electrical input power from a
source, the input power having an input voltage;
an output for delivering electrical output power to the
electronic device, the output power having an output voltage;
power circuitry for converting the input voltage to the
output voltage; and
a latching relay coupled between the input and the power
circuitry, wherein the latching relay is closed in response to a
remote electrical connection to change the power circuitry to
the “on” state and opened to change the power circuitry to the
“off” state.

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17. A power device for supplying power to an electronic
device, the power device comprising:
an input for receiving electrical, input power from a
source, the input power having an AC input voltage;
an output for delivering electrical output power to the
electronic device, the output power having a DC output voltage;
power circuitry for converting the input voltage to the
output voltage, the power circuitry including a transformer;
a latching relay coupled between the input and the
transformer; and
control circuitry for causing the latching relay to close in
response to a remote electrical connection established between
two or more terminals to change the power circuitry to the “on”
state and for causing the latching relay to open to change the
power circuitry to the “off” state,
wherein the output voltage is substantially constant when
the power circuitry is in the “on” state.

STATEMENT OF THE REJECTIONS
Claims 1-20 are subject to reexamination. Requester’s App. Br. 2.
Claims 1, 5-8, and 10-20 stand rejected. Id. 3. Claims 2-4 and 9 remain
allowed. Id. 2.
Owner appeals the following Bases of Invalidity (“BI”) of claims 1, 5-
8, and 10-20, which the Examiner of the reexamination proceeding (“the
Examiner”) adopted (see PO App. Br. 4-32):
BI–1. Claims 1 and 10-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang (WO 2007/027063 A1; published Mar. 8,
2007) in view of Suzuki (US 6,489,725 B1; issued Dec. 3, 2002).
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US Patent No. 8,242,359 B2

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BI–3. Claims 5-7 and 17-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang in view of Suzuki and Odaohhara
(US 6,986,067 B2; issued Jan. 10, 2006).
BI–4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yang in view of Suzuki and Shirato (EP 1 122 872 B1; published
May 23, 2007).
BI–5. Claims 1, 7, 8, and 10-13 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 Chen (US 2004/0056533 A1; published
Mar. 25, 2004) and Suzuki.
BI–6. Claims 5, 6, and 14-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bhogal in view of Chen, Suzuki, and Odaohhara.
BI–7. Claims 1, 7, 10, 11, 13, 14, 17, and 20 are 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.

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 2-4 and 9 (3PR App. Br. 4):
BI–8. Claims 2, 4, and 9 are asserted to be obvious under 35 U.S.C. § 103(a)
over Yang in view of Suzuki.
BI–9. Claim 3 is asserted to be obvious under 35 U.S.C. § 103(a) over Yang
in view of Suzuki and Kalin (US 5,760,491; issued June 2, 1998).
BI–10. Claims 2, 4, and 9 are asserted to be obvious under 35 U.S.C.
§ 103(a) over Yang in view of Suzuki and Owner’s admitted prior art.
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US Patent No. 8,242,359 B2

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BI–11. Claim 3 is asserted to be obvious under 35 U.S.C. § 103(a) over
Yang in view of Suzuki, Owner’s admitted prior art, and Kalin.
BI–12. Claims 2, 4, and 9 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 Suzuki and Hoeyer (EP 1473813 B1; published Mar.
16, 2005).
BI–13. Claim 3 is asserted to be obvious under 35 U.S.C. § 103(a) over
Watanabe in view of Suzuki, Hoeyer, and Kalin.

CLAIMS 1-16
Independent claims 1 and 10 both recite the limitation, “a latching
relay coupled between the input and the power circuitry” (emphasis added).
We will first analyze the meaning of this claim limitation and subsequently
turn to the merits of the appealed rejections. “Before considering the
rejections . . ., we must first [determine the scope of] the claims . . . .” In re
Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
In setting forth the noted limitation supra, we emphasize the
descriptor “between” because such a positional relationship of a latching
relay relative to the power circuitry is not disclosed by the originally filed
Specifications of either the present ’359 Patent or the parent ’833 Patent.
Instead, the originally filed Specifications indicate that the latching relay is
a part of the power circuitry. The parent ’833 Patent states, for example,
“the switch assembly provides an output signal to activate the circuitry to
the ‘on’ state, and the circuitry includes a latching relay that is closed in
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response to the switch assembly output signal.” ’833 Patent, col. 4, ll. 58-
61 (emphasis added); accord ’359 Patent, col. 5, ll. 1-4. Also,
In some forms, the circuitry includes a latching relay that is
closed in response to the switch assembly changing the circuitry
to the “on” state, the latching relay being opened in response to
the output power being at or below a threshold power level to
change the circuitry to the “off” state.
’833 Patent, col. 5, ll. 30-34 (emphasis added); accord ’359 Patent,
col. 5, ll. 41-45.
The Detailed Description section of the ’833 Patent also states
that the relay coil is a part of the circuit:
FIG. 9 is directed towards a form of the power device utilizing
a relay 530 driven to close the circuit, and FIG. 12 shows a
similar form of a circuit for such power device utilizing a relay
530’ driven by a relay coil 532’, the relay 530’ being located in
the circuit at a position so that opening the relay 530’
disconnects all power consumption for the power device.
’833 Patent, col. 10, l. 62 – col. 11, l. 1 (emphasis added); accord ’359
Patent, col. 11, ll. 9-15. See also claim 18 of the ’833 Patent:
18. The power device of claim 11 wherein the circuitry
includes a latching relay that is closed in response to the switch
assembly output signal, the latching relay being opened in
response to the output power being at or below a threshold
power level to change the circuitry to the “off” state.
(Emphasis added.)
Furthermore, none of the drawings depict a latching relay positioned
in a manner that can be reasonably interpreted as being “coupled between
the input and the power circuitry,” as opposed to being part of the circuitry.
See, e.g., Fig. 9 and the associated discussion:
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The relay 530 is a latching-type relay so that it remains closed
until otherwise instructed, powered or not. As can be seen, the
relay coil 532 is connected to the start switch 520 by a closing
diode 536 to effect this; the relay coil 532 is also connected to
an opening diode 538 that is reversed in operation to the closing
diode 536. As will be discussed, when the power device 10
recognizes a sufficiently low power draw, a transistor 540 is
activated to cause power to flow through the opening diode 538
and, thus, reverse the physical movement of the relay coil 532,
which in turn opens the relay plates 530a, 530b. In this
manner, the power device 10 is returned to its “off” state.
’833 Patent, col. 10, ll. 9-20; accord ’359 Patent, col. 10, ll. 22-33.
Figure 9 and the associated discussion of the originally filed
Specifications instead indicate that the latching relay is, in fact,
incorporated with, and constitutes a portion of, the power circuitry.
As such, neither the originally-filed Specification of the present
’359 Patent, nor of the parent ’833 Patent, provides adequate written
description as required by 35 U.S.C. § 112, ¶ 1, for the claim
limitation of providing a latching relay coupled between the input and
the power circuitry. Instead, independent claims 1 and 10 were later
amended during the course of the original prosecution of the ’359
Patent to recite that the latching relay is coupled between the input
and the power circuitry. See Claim Amendment (filed Nov. 28, 2011)
of independent claim 34 (issued as claim 1) and independent claim 52
(issued as claim 10).
It seems reasonably clear that the amended claim language was
intentional. Cf. independent claim 17 (alternatively setting forth that
the latching relay is “coupled between the input and the transformer”)
(emphasis added). The language of claim 17 indicates that Owner
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was aware of alternative ways of claiming the relative disposition of
the latching relay, and could have employed the alternative language
of claim 17, if desired.
It is not reasonably clear, though, what objective metes and
bounds of claim protection are being sought by independent claims 1
and 10. As noted supra, the Specification explains how the power
circuitry controls the operation of the power device based upon
internally-sensed conditions. See, e.g., the embodiments depicted in
Figures 8-13. And some of these embodiments include a latching
relay to assist in controlling the state of the circuitry. See, e.g.,
latching relay 532 discussed in relation to the Figure 9 embodiment
wherein the latching relay receives signals from the circuitry and
constitutes part of the circuitry. ’833 Patent, col. 9, l. 55 – col. 10, l.
20; ’359 Patent, col. 10, ll. 1-33. It is unclear, then, where the
latching relay is to be disposed in order to be deemed to be between
the input and the circuitry. It is also unclear from where such a
latching relay may receive control signals. For example, it is unclear
whether a latching relay could be deemed to be between the input and
the power circuitry if it receives control signals from the power
circuitry, or whether the relay must necessarily be powered by some
alternative exterior source.
It may be the case that Owner is attempting to claim that a
latching relay is being employed within the main power switch
assembly 50 (see, e.g., Figs. 1-3, 10) instead of the switch 520 of
Figure 9. However, this is mere speculation, and just as importantly,
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such a disclosure is unsupported by the originally-filed Specification.
See ’359 Patent, col. 7, ll. 49-51 (merely stating that switch assembly
50 may include rocker or toggle throw 52, but not mentioning a
latching relay).
If this issue arose in an appeal of a patent application or of a claim
amended during reexamination, we would enter a new ground of rejection
under 37 C.F.R. § 41.50(b) on the basis of indefiniteness pursuant to
35 U.S.C. §112, ¶ 2. In such a case, we would not reach the rejections under
35 U.S.C. §§ 102 and 103 because they would necessarily be based on
speculative assumptions as to the meaning and scope of the claims. See In
re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
However, rejections based on 35 U.S.C. § 112 are beyond the scope of
a reexamination proceeding for originally issued patent claims. Statutory
provision 35 U.S.C. § 302 states “[a]ny person at any time may file a request
for reexamination by the Office of any claim of a patent on the basis of any
prior art cited under the provisions of section 301.” 35 U.S.C. § 302 (1999).
Thus, we are constrained from presenting a rejection under 35 U.S.C. § 112,
¶ 2, for these claims.
Accordingly, we do not sustain the Examiner’s decision to reject
independent claims 1 and 10, as well as their dependent claims, claims 5-8
and 11-16, because applying prior art to such claims would be unduly
speculative. Specifically, we do not sustain the following obviousness
rejections:
(i) The rejection of claims 1 and 10-16 over Yang in view of Suzuki, as
recited in BI–1;
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(ii) The rejection of claims 5-7 over Yang in view of Suzuki and
Odaohhara, as recited in BI–3;
(iii) The rejection of claim 8 over Yang in view of Suzuki and Shirato, as
recited in BI–4;
(iv) The rejection of claims 1, 7, 8, and 10-13 over Bhogal in view of
Chen and Suzuki, as recited in BI–5;
(v) The rejection of claims 5 and 6 over Bhogal in view of Chen, Suzuki,
and Odaohhara, as recited in BI–6; and
(vi) The rejection of claims 1, 7, 8, 10, 11, 13, and 14 over Unger in view
of Suzuki, as recited in BI–7.
For the same reasons mentioned above, we likewise sustain the
Examiner’s decision to not adopt the following obviousness rejections:
(i) The rejection of claims 2, 4, and 9 over Yang in view of Suzuki, as
recited in BI–8;
(ii) The rejection of claim 3 over Yang in view of Suzuki and Kalin, as
recited in BI–9;
(iii) The rejection of claims 2, 4, and 9 over Yang in view of Suzuki and
Owner’s admitted prior art, as recited in BI–10;
(iv) The rejection of claim 3 over Yang in view of Suzuki, Owner’s
admitted prior art, and Kalin, as recited in BI–11;
(v) The rejection of claims 2, 4, and 9 over Watanabe in view of Suzuki
and Hoeyer, as recited in BI–12; and
(vi) The rejection of claim 3over Watanabe in view of Suzuki, Hoeyer and
Kalin, as recited in BI–13.

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US Patent No. 8,242,359 B2

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REJECTION OF CLAIMS 17-20 BASED UPON
BI–6: BHOGAL IN VIEW OF CHEN, SUZUKI, AND ODAOHHARA
Contentions
The Examiner adopts Requester’s proposed obviousness rejection of
claims 17-20 over the combination of Bhogal, Chen, Suzuki, and
Odaohhara, as set forth in BI–6. RAN 4-5 (incorporating by reference,
Request 62-79). BI–6 extends BI–5, which is based upon only Bhogal,
Chen, and Suzuki, to further combine Odaohhara. RAN 47-61.
In those Bases of Invalidity, Bhogal is relied upon for teaching a
power device for supplying power to an electronic device, generally, but not
for teaching a latching relay coupled between the power device’s input and
transformer. Id. Chen is relied upon for “disclos[ing] a switch 121 []
positioned between an input 103 and power circuitry.” RAN 51. The stated
motivation to position the switch between the input and the power circuitry
according to Chen is “to reduce power consumption .” Id. Suzuki is relied
upon for disclosing “utilizing a latching relay 4A in a power saving circuit.”
RAN 52. The stated reason for the specific selection of a latching relay is
that Suzuki indicates that a latching relay would be operably interchangeable
with the switch according to Bhogal and Chen. Id.
Odaohhara is additionally relied upon in BI–6 for teaching a “cable 6
[that] includes a plug 7 with two or more electrical terminals which, when
connected, are configured to cause the power circuitry to the ‘on’ state.”
RAN 63. The RAN explains
It would have been obvious to one having ordinary skill in the
art to modify the switch assembly member of Bhogal to provide
electrical terminals at the second portion to allow Bhogal’s
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power device to become activated when plugged into the
electronic device, to reduce power consumption, as suggested
by Odaohhara: “Thus, according to the embodiment of the
present invention, for example, when the main body of a note
PC 9 is not connected, the power loss of the AC adaptor 10,
which is a power supply device, can be reduced, contributing to
energy saving and the prevention of global warming.” See
Odaohhara at col. 8, lns. 62-66.
RAN 63-64.
Owner presents various arguments against the combination of
references. PO App. Br. 21-29. With respect to independent claim 17 (as
opposed to independent claims 1 and 10), Owner argues that Bhogal does
not disclose a switch per se, and Bhogal’s Switching Logic Circuit 300 is
downstream of the transformer 230, as opposed to being positioned on the
primary winding side of the transformer. PO App. Br. 26. Owner contends
that BI–6 modifies the undisclosed switch assembly of Bhogal to provide
two terminals according to Odaohhara. Id. “Odaohhara [] does not disclose
a device in which power is in the ‘off’ state as that term is properly
construed. Id. Owner also understands the rejection to be making an
improper double substitution of Bhogal’s switch—first with the latching
relay of Suzuki and then with the switch of Odaohhara. Id. at 26-27.
Finally, Owner argues that the Bhogal and Odaohhara circuits are entirely
different, and “[t]here is no justification to combine these teachings.” Id. at
27.
Interpreting Claim 17
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We therefore first analyze the metes and bounds of claim 17 prior to
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addressing the propriety of the rejection based upon the combination of
Bhogal, Chen, Suzuki, and Odaohhara.
As a threshold matter, we must first determine to which
embodiment(s) of the invention claim 17 is directed. The Summary of the
Invention section of Owner’s Appeal Brief does not answer this question
clearly. See PO App. Br. 3. In this Summary, Owner does not specify any
particular Figure or embodiment, but instead cites to disjointed portions of
the Specification that address different embodiments. Some citations relate
to the embodiments of Figures 1-3, which include switch 50. See id. (citing
to various lines of column 7). Other citations relate to embodiments
depicted in at least Figure 9, which includes latching relay 530 or 530’.
2
See
id. (citing to various lines of columns 8 and 10).
3

Reading the claim as a whole and comparing the limitations to that of
the present Specification, we understand claim 17 to be directed to the
embodiment of Figure 12, which is reproduced below:

2
Figure 9 is said to illustrate portions of a circuit diagram that is to be used
in conjunction with the embodiment of Figure 8. Col. 10, ll. 1-7.
3
The specific lines recited in the Summary section of the Owner’s Appeal
Brief make it further unclear whether Owner is citing to the Specification of
the present ’359 Patent or to the Specification of the parent ’833 Patent.
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Figure 12 depicts and embodiment of the ’359 Patent that includes
Power-On Switch SW1 and relay 530’
More specifically, we understand Power-On Switch SW1 to
correspond to the claim 17’s “remote electrical connection established
between two or more terminals.” We reach this conclusion in part because
in the variant embodiment of Figure 11, Power-On Switch SW1 is
additionally labeled as 50—the reference numeral used for the switch
assembly in the embodiments of Figures 1-3. We also understand claim 17’s
“latching relay coupled between the input and the transformer” as being
intended to correspond to relay switch 530.’ We base this conclusion on the
fact that relay 530’ is between the input 502 and the transformer—the
unlabeled diode bridge that is alternatively labeled as 420 in Figure 8 and
referenced as “T” in the Specification. See, e.g., col. 8, l. 39 (referencing
Transformer T of Figure 8; not to be confused with the usage of reference
letter “T” that is used in Figure 6 to identify the switch terminals T).
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Furthermore, relay coil 532’ will cause relay 530’to close upon the terminals
of Power-On Switch SW1 closing and thereby establishing a remote
electrical connection. See col. 10, ll. 11-33; see also col. 11, ll. 11-15 (“FIG.
12 shows a similar form of a circuit for such power device utilizing a relay
530’ driven by a relay coil 532’, the relay 530’ being located in the circuit at
a position so that opening the relay 530’ disconnects all power consumption
for the power device).
We next analyze the last limitation of claim 17, which recites
“wherein the output voltage is substantially constant when the power
circuitry is in the ‘on’ state. The present Specification’s claims, as originally
filed on March 21, 2011, do not set forth the claim language regarding the
output voltage being “substantially constant when the power circuitry is in
the ‘on’ state.” Rather, this limitation was subsequently added by claim
amendment. See Amendment (filed Nov. 28, 2011) amending original
claims 34 and 61 (now issued claims 1 and 17).
Owner states that the claim term “substantially constant” is supported
by column 1, line 28 of the Specification. PO App. Br. 3. The passage of
the Specification commencing at this line merely states that “portable
devices [such as music players, cellular telephones, personal data assistants,
and smartphones] are powered by a rechargeable on-board battery.”
Furthermore, the written Specification nowhere else recites this disputed
language either. The Specification does state, though, “[f]or 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.” Col. 7, ll. 19-24.
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We, therefore, understand this claim limitation to merely require a
power device that outputs some DC voltage at a level that is sufficiently
constant to enable the power device to perform its intended function of
supplying power to an electronic device. For example, the DC power output
from Bhogal’s connector 205 (see Bhogal; ¶ 16; Fig. 2) may be deemed to
be “substantially constant” because it presumably works for its intended
purpose of supplying a constant DC voltage. Similarly, the DC power
output 26 from Unger’s AC-DC Converter 22 (see Fig. 2) may be deemed to
be “substantially constant” because it also presumably works for its intended
purpose. If we were to adopt any narrower interpretation of this claim
language, it would likely raise questions of whether the claim language is
adequately supported by the originally-filed Specification.
Having interpreted the metes and bounds of independent claim 17, we
now turn to Owner’s arguments regarding the cited prior art.
Analysis of the Obviousness Rejection
None of Owner’s arguments regarding Bhogal’s failure to draw zero
power when in the ‘off’ state is persuasive. See, e.g., PO App. Br. 24
(wherein Owner contends that “[n]either Chen, nor Bhogal, nor Suzuki
expressly describes an ‘off’ state when that term is properly construed”).
Unlike claim 1 of the parent ’833 Patent, for example, Claim 17 of the
present appeal does not contain any limitation requiring that the power
device draws no input power in the ‘off’ state. The present Specification
makes clear that “‘off’ state” has a broader meaning than that urged by
Owner. See col. 10, ll. 59-63 (explaining “various power devices are
described having a variety of features that may be selected and/or combined
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20
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.” As such, we will not read the term “‘off’ state” of
claim 17 so narrowly as being limited to “no power” absent additional claim
language that reasonably indicates such a limitation is required.
4

We next address Owner’s arguments that Bhogal does not disclose a
switch per se, and Bhogal’s Switching Logic Circuit 300 is downstream of
the transformer 230, as opposed to being positioned on the primary winding
side of the transformer. PO App. Br. 26. First, we disagree with Owner’s
contention that Bhogal does not disclose a switch per se. While a switch
may not be expressly depicted in any of the drawings, switches are expressly
disclosed in the written portion of the Specification. See, e.g., Bhogal, ¶ 13
(explaining that “Switching Logic Component 300 comprises a
microprocessor, electronic switches and any necessary signal converters that
enable the microprocessor to redirect current as required by the
microprocessor[’]s programing.”).
It is true that Bhogal’s switches may potentially be electronic switches
such as transistors instead of an electromechanical switch such as a latching
relay. However, the rejection is not based upon Bhogal alone. The rejection
is additionally based upon the combination of Suzuki. Suzuki was combined
for the proposition that latching relays and electronic switches were art
recognized functionally equivalent devices for switching electrical signals.

4
We separately address the language “draws substantially no power” of
claim 20 infra.
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It is also true that Bhogal does not sufficiently disclose whether
Switching Logic Component 300 is specifically connected to transformer
230 in a manner that cuts off power to the transformer on the primary
winding side or on the secondary winding side.
5
However, the present
rejection further relies upon Chen for teaching that a power supply control
circuit 300 can open a switch 121 that is located between the AC input
terminal 103 and the AC/DC converter 115. Chen, Figs. 2, 3. Owner has
not provided persuasive evidence that would prevent us from concluding
that, at least within Bhogal’s power supply, placing a switch on either the
primary winding side of a transformer, or alternatively on the secondary
winding side, merely constituted obvious, art-recognized functionally
equivalent means of opening the electrical circuit that includes a
transformer. We find that Bhogal would still operate when the switch is
placed on the primary winding side because the local battery 260 could still
operate the Switching Logic Component 300 when no AC power is supplied
to the transformer. See PO App. Br. 24 (not disputing that Switching Logic
Component 300 can be operated by battery 260 even when no AC power is
provided).

5
This issue is analyzed in depth in our Opinion for the related appeal
of the parent ’833 Patent. See ’7294 Dec. 24-30. Rather than repeat
that lengthy analysis in its entirety, we instead adopt and incorporate
by reference our findings and reasoning regarding our conclusion that
Bhogal does not contain a sufficiently specific disclosure to allow us
to reasonably conclude whether Bhogal’s Switching Logic
Component 300 opens a switch on the primary winding side of the
transformer 230.

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22
We are not persuaded by Owner’s arguments that (1) rejection BI–6
modifies the undisclosed switch assembly of Bhogal to provide two
terminals according to Odaohhara (PO App. Br. 26); or (2) the rejection is
making an improper double substitution of Bhogal’s switch—first with the
latching relay of Suzuki and then with the switch of Odaohhara (id. at 26-
27). As noted supra in the claim interpretation section, claim 17 requires the
presence of two switches: the main Power-On Switch and the latching relay.
Likewise, Bhogal itself contains two switches. One of Bhogal’s switches is
associated with the Switching Logic Component 300 that shuts off the AC
transformer and causes the power supply to use local battery 260 to supply
DC power (340). Bhogal, ¶ 0018. Bhogal’s second switch is the control
contact 280, which “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.”
Bhogal, ¶ 0013. As such, we understand the rejection to be premised upon
combining the teachings of Chen and Suzuki for the disclosure of the
appropriately positioned latching relay. Odaohhara is being relied upon for
teaching potential structural details for implementing Bhogal’s separate
switch 280 that is contained within receptacle 270.
For the reasons just noted, we likewise find unpersuasive Owner’s
argument that the Bhogal and Odaohhara circuits are entirely different, and
“[t]here is no justification to combine these teachings.” Id. at 27.
Odaohhara and Bhogal are not being combined for the purpose of combining
their respective circuits’ functionality. Rather, we understand the Examiner
to be relying on Odaohhara for its teachings of how to structurally embody
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23
Bhogal’s receptacle 270 and more specifically the switch of control contact
280.
Accordingly, Owner has not established the Examiner erred in
rejecting independent claim 17. We therefore sustain the Examiner’s
decision rejecting claim 17. We likewise sustain the rejection of dependent
claims 18 and 19, which were not separately argued. See PO App. Br. 28.
Claim 20
Claim 20 depends from claim 17 and further sets forth “wherein the
power device draws substantially no power from the source when the power
circuitry is in the ‘off’ state” (emphasis added). Owner “submits that the
proper claim construction for ‘drawing substantially no power’ refers to a
circuit that is opened by a ‘hard switch’ and excludes electronic switches
such as a transistor or electronic switch.” PO App. Br. 28. We start our
analysis, then, by determining what is meant by the claim term “substantially
no power.” “Before considering the rejections . . ., we must first [determine
the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974).
Owner’s entire invention is directed towards ways of reducing or
preventing phantom load that is otherwise present when a power supply is in
the ‘off’ state. See, e.g., ‘359 Patent, Background section. 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.”
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PO App. Br. 6. In other words, the various embodiments of the present
invention are directed to fine gradations of what would otherwise all be
more generally considered to simply constitute an ‘off’ state.
In fact, Owner’s Specification provides distinct categories of ways in
which a power supply can be deemed to be ‘off.’ See 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 and low-power consumption.
“[N]o power consumption” is further defined with its own objective
standards. Power draw is “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. Circuits that use
solid state switches, such as those in the Figure 8 embodiment, are merely
able to cause the phantom load to be “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. 7-8.
The question to be answered, then, is whether the claim language
“drawing substantially no power” is to be interpreted narrowly to be limited
to “drawing zero” or “drawing negligible” power consumption, or whether it
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should be interpreted more broadly to additionally include drawing low
power consumption and/or intermittent power consumption wherein the
phantom load is merely “virtually eliminated.” See col. 8, ll. 27-31.
In Philips, our reviewing court held that “the specification is the
single best guide to the meaning of a disputed term and . . . acts as a
dictionary when it expressly defines terms used 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 three related present 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
amended claim 25 and new claim 50, respectively, when the term
“substantially” was added by amendment).
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
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any other specific level, though. Instead, “reduced power” reasonably seems
to read on any power level that is less than what would be achieved if the
power saving feature were not present.
This interpretation of “reduced power” is supported by claim 43 of the
’648 continuation-in-part Patent. Claim 44 recites inter alia a cable
assembly “wherein when the cable assembly is in the reduced power state,
the power consumed by the cable assembly is on the order of microwatts.”
If “reduced power” were itself limited to microwatts or less, then there
would be no need for the claim to further set forth the additional claim
language that the power consumed is on the order of microwatts. Such a
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 so.” Merck
& Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Circ. 2005).
We find, then, that “substantially no power” is broader than the terms
“no power” or “negligible power.” More specifically, we interpret
“substantially no power” to be synonymous with “reduced power”—to mean
any power consumption level that is less than what would be achieved if the
power saving feature were not present. If Owner had intended for the power
level of claim 20 to be limited to the order of microwatts, Owner could have
employed one of the terms that Owner had already objectively defined to be
so limited—zero or negligible power. But by choosing to modify the
objectively defined term “no power” with the undefined adjective
“substantially” instead of the alternatively available, objectively defined
adjective “negligible,” Owner appears to be affirmatively signaling that the
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claim scope is not limited to power devices that draw only microwatts of
power in the “off” state.
“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). 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 applicants’ burden to
precisely define the invention, not the [US]PTO’s.” In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997). Accord In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969) (explaining in the context of ex parte appeals that Appellants
always have the opportunity to amend the claims during prosecution, and
broad interpretation by the Examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified.)
Based upon this interpretation of the claim language “draws
substantially no power,” we are unpersuaded by Owners argument (PO App.
Br. 28) that claim 20 requires a hard switch or any other switch that
specifically draws “no power”—power that is only on the order of
microwatts or less. Instead, claim 20 merely requires that the power device
of independent claim 17 draw less power than it would if it contained no
power saving features. Any narrower interpretation of claim 20’s language
would raise issues of whether the metes and bounds of the claim term are
reasonably clear as required by 35 U.S.C. § 112, ¶ 2.
Accordingly, we sustain the Examiner’s decision rejecting claim 20.

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CONCLUSIONS
We do not sustain any of the Examiner’s rejections of independent
claims 1 and 10, or their dependent claims, claims 5-8 and 11-16, because
applying prior art to such claims would be unduly speculative.
For the same reasons, we do sustain the Examiner’s decision to not
adopt any of the proposed obviousness rejections of claims 2-4 and 9.
We sustain the Examiner’s obviousness rejection of claims 17-20 over
the combination of Bhogal, Chen, Suzuki, and Odaohhara.
In view of our sustaining the obviousness rejection of claims 17-20
over these four cited references, we do not reach the obviousness rejection of
claims 17-20 over Yang in view of Suzuki and Odaohhara or the
obviousness rejection of claims 17 and 20 over Unger in view of Suzuki.
See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection).

DECISION
The Examiner’s decision rejecting claims 17-20 is affirmed.
The Examiner’s decision to not reject claims 2-4 and 9 is affirmed.
The Examiner’s decision rejecting claims is 1, 5-8 and 10-16 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

Appeal 2014-007812
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US Patent No. 8,242,359 B2

29

alw

Patent Owner:
Jerold I. Schneider
Schneider, Rothman IP Law Group
4651 North Federal Highway
Boca Raton, FL 33431

Third Party Requester:

Ketan S. Vakil
Snell & Wilmer
600 Anton Blvd., #1400
Costa Mesa, CA 92626