Ex Parte Aronov et al

Patent Trial and Appeal Board

Apr 11, 2018

14623052 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/623,052 02/16/2015
49443 7590 04/13/2018
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
Daniel Aronov
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P-79174-US 5624
EXAMINER
PACHECO, ALEXIS BOATENG
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
04/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@PearlCohen.com
Arch-USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL ARONOV, LEONID KRASOVITSKY, MAXIM
LIBERMAN, V ADIM SABA YEV, and LEONID SPINDLER
Appeal2017-009101
Application 14/623,052
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-3, 5, and 7-21. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, StoreDot Ltd., which, according to the Appeal
Brief, is the real party in interest. Appeal Brief filed September 19, 2016
("App. Br."), 1.
Appeal2017-009101
Application 14/623,052
STATEMENT OF THE CASE
Appellant claims an integrated power management and energy-storage
cell unit for fast-charging a rechargeable device (independent claim 1 ), and a
mobile device comprising, inter alia, an integrated power management and
energy-storage cell unit for fast-charging a rechargeable device (independent
claim 12). Claim 1 illustrates the subject matter on appeal:
1. An integrated power management and energy-storage
cell unit for fast-charging of a rechargeable device, the
integrated unit comprising:
an energy-storage cell; and
an integral power management unit (PMU), integrally
and directly connected to said energy storage cell, said PMU is
configured to transform a high-power input having an input
voltage and a low input RMS current, into a high-power output
having an output voltage and a high output RMS current, said
high-power output is greater than about 40W, said integrated
power management and energy-storage cell unit is embedded in
a mobile device.
App. Br. 7 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 1-3, 5, and 7-21 under
35 U.S.C. § 103 as unpatentable over Garstein et al. (US 6,163,131, issued
December 19, 2000) in view of Yamakawa et al. (US 2015/0061580 Al,
published March 5, 2015) and Chapman (US 2012/0320641 Al, published
December 20, 2012) in the Final Office Action entered November 18, 2015
("Final Act."), and maintains the rejection in the Examiner's Answer entered
October 31, 2016 ("Ans.").
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Application 14/623,052
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-3, 5, and 7-21under35 U.S.C. § 103 for the reasons set forth in
the Final Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections")).
Appellant argues claims 1-3, 5, and 7-21 as a group on the basis of
claims 1 and 12, which Appellant argues together. Br. 3---6. We accordingly
select claim 1 as representative, and decide the appeal as to claims 1-3, 5,
and 7-21 based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Gartstein discloses batteries that include a single electrochemical cell
having a built-in controller, and batteries that include multiple
electrochemical cells in which each individual electrochemical cell has its
own built-in controller. Col. 1, 11. 6-9. Appellant does not dispute the
Examiner's finding that the controller disclosed in Gartstein corresponds to
the power management unit recited in claim 1. Compare Final Act. 2, with
Br. 3---6. Nor does Appellant dispute the Examiner's finding that the
electrochemical cell disclosed in Gartstein corresponds to the energy-storage
cell recited in claim 1. Compare Final Act. 2 with, Br. 3---6.
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Application 14/623,052
Gartstein discloses numerous battery embodiments, including battery
110 illustrated in Figure 4 that includes "embedded integrated controller
circuit 140." Col. 12, 11. 17-21; Fig. 4. Gartstein discloses that control
circuit 140 is placed inside battery container 112 between positive 132 and
negative 134 electrodes of electrochemical cell 130, and between positive
120 and negative 122 terminals of battery 110. Col. 12, 11. 27-31; Fig. 4.
Gartstein illustrates another battery 210 in Figure 5 A that includes
controller 240 and electrochemical cell 230. Col. 10, 1. 55---col. 11, 1. 8; Fig.
5A. Gartstein discloses that positive output 242 of controller 240 is
electrically connected to positive terminal 220 of battery 210, which is
directly adjacent to controller 240. Col. 10, 11. 59---64; Fig. 5A. Gartstein
further discloses that negative output 244 of controller 240 is electrically
connected to negative terminal 222 of battery 210. Id. Gartstein also
illustrates battery 410 in Figure 5C that includes controller 440 formed on
wrapper 441, which is positioned inside battery container 412 between side
wall 414 and cathode 432. Col. 11, 11. 37--41, 63---64; Fig. 5C.
Based on these disclosures, the Examiner finds that the controller
(power management unit) disclosed in Gartstein is integrally and directly
connected to an electrochemical cell (energy-storage cell), as recited in
claim 1. Final Act. 3; Ans. 17-20. The Examiner finds that Gartstein does
not disclose that the controller (power management unit) is configured to
transform a high power input, having an input voltage and a low input RMS
current, into a high power output greater than about 40W and a high output
RMS current, and the Examiner relies on Yamakawa for suggesting these
features. Final Act. 3--4.
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Appeal2017-009101
Application 14/623,052
Yamakawa discloses an electric power transmission system having a
power transmission side and power receiving side. i-f 23; Fig. 1. Yamakawa
discloses that on the power receiving side, AC power is received by antenna
210 and rectified by rectifying unit 220. i-f 39; Fig. 1. Yamakawa discloses
that the output of rectifying unit 220 is stepped up or stepped down to a
predetermined voltage value by step-up and step-down unit 230, and the
resulting voltage is supplied by step-up and step-down unit 230 to battery
240 to charge the battery. i-fi-139, 40; Fig. 1. Yamakawa discloses that
control unit 250 can control step-up and step-down unit 230 to charge
battery 240 with a maximum power value. i-fi-1 7, 40.
The Examiner determines that one of ordinary skill in the art would
have modified Gartstein's battery at the time of Appellant's invention to
enable it to be charged with maximum power as disclosed in Yamakawa to
allow use of the battery for particular applications that require maximum
power. Final Act. 4.
Appellant argues that Figure 5A of Gartstein shows controller 240
connected to negative terminal 222 of battery 210 via conductive strip 245.
Br. 3 (citing Gartstein col. 10, 11. 64---66). Appellant asserts that due to the
presence of conductive strip 245, controller 240 is not directly connected to
battery 210 as required by claim 1. Br. 3. Appellant further contends that
other embodiments disclosed in Gartstein also do not provide a direct
connection between a controller (power management unit) and a battery,
such as the embodiment of Figure 5B having a connection via conductive
strip 349, and the embodiment of Figure 5C in which controller 440 is
formed on a wrapper 441. Id. Appellant argues that "[t]he conductive
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Application 14/623,052
strip/wrapper of Gartstein creates resistance and losses," which Appellant's
invention seeks to prevent. Br. 3--4.
However, the most detailed description of a power management unit
"integrally and directly" connected to an energy storage cell that we find in
Appellant's Specification occurs in the context of a description of the
schematic diagrams illustrated in Figures 2A and 3A, in which the
Specification states that "[ t ]he PMU is an integral part of the energy-storage
device, connected directly to the energy-storage cell." Spec. 7, 11. 12-20; 8,
11. 3-8. There does not appear to be any further definition or limiting
description of a power management unit "integrally and directly connected"
to an energy storage cell in Appellant's Specification, and Appellant does
not direct us to any such disclosure. Br. 3---6. Thus, under a broadest
reasonable interpretation consistent with the description provided in
Appellant's Specification, the embedded integrated control circuit 140
disclosed in Gartstein that is placed inside battery container 112 between
positive 132 and negative 134 electrodes of electrochemical cell 130 and
between positive 120 and negative 122 terminals of battery 110 (col. 12, 11.
17-31; Fig. 4.), corresponds to an "integrally and directly connected" power
management unit as recited in claim 1. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent
applications, "the PTO must give claims their broadest reasonable
construction consistent with the specification . . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.").
In addition, battery 210 illustrated in Figure 5A of Gartstein
(discussed above) also includes an "integrally and directly connected" power
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Application 14/623,052
management unit as recited in claim 1 in view of Gartstein' s disclosure that
positive output 242 of controller 240 (power management unit) of the battery
is electrically connected to positive terminal 220 of the battery, which is
directly adjacent to controller 240, and negative output 244 of controller 240
is electrically connected to negative terminal 222 of the battery. Col. 10, 11.
59---64; Fig. 5A.
With respect to Appellant's assertion that Appellant's invention seeks
to prevent resistance and losses supposedly created by Gartstein's
conductive strip/wrapper, claim 1 does not require prevention of resistance
and losses. In re Self, 671F.2d1344, 1348(CCPA1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.") Moreover, "[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007).
Appellant further argues that Gartstein teaches away from its
combination with Yamakawa because Gartstein discloses a battery having
individual controllers that modify the charge/discharge cycle of the battery
based on measured battery parameters, indicating that "it is not always
desirable to provide the maximum amount of power to charge the battery."
Br. 5 (citing Gatrstein Summary of the Invention and col. 3, 11. 34--38).
Appellant asserts that Gartstein discloses a particularly advantageous power
supply that has high energy density but only provides low current levels,
whereas Yamakawa's step-up and step-down unit is controlled so that the
power provided to the battery from the unit is maximized. Br. 5 (citing
Gartstein col. 33, 11. 5-65; Yamakawa i-f 59). Appellant contends that one of
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Application 14/623,052
ordinary skill in the art would not have combined Yamakawa's element that
provides maximum power to a battery with Gartstein's battery because
Gartstein teaches that it is advantageous to provide low current to Gartstein's
battery. Br. 5.
However, Gartstein's Summary of the Invention---cited by Appellant
as supposedly indicating that Gartstein discloses that "it is not always
desirable to provide the maximum amount of power to charge the battery"
-states that examples of operations that may be performed by a controller
built into each electrochemical cell of the batteries disclosed in Gartstein
include "controlling a charge cycle of the electrochemical cell by directly
monitoring the electrochemical properties of that particular cell." Col. 3, 11.
50-66. Contrary to Appellant's assertion, this disclosure does not indicate
that "it is not always desirable to provide the maximum amount of power to
charge the battery." Br. 5.
In addition, although Gartstein does disclose using a "metal-air cell,
such as a zinc-air cell that has high energy density, but is only able to
provide relatively low current levels" to supply power to the batteries
described in the reference, Gartstein discloses numerous additional suitable
power supplies, including "an external supply such as a power cord of a
device or an internal supply such as another electrochemical cell," a fuel
cell, a conventional capacitor, and a super-capacitor. Col. 33, 11. 54--67; col.
19, 11. 48-56; col. 20, 11. 52-53. Gartstein further discloses that
combinations of one or more power supplies may be used, such as alkaline
and metal-air cells, metal-air and secondary cells, and a metal-air cell and a
super capacitor. Col. 19, 11. 48-56. Thus, Gartstein's disclosures are not
limited to power supplies that only provide low current (metal-air cells).
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Application 14/623,052
Rather, Gartstein discloses numerous additional types of power supplies, and
discloses using power supplies that provide low current in combination with
other types of power supplies. Accordingly, one of ordinary skill in the art
would have understood from Gartstein's disclosures as a whole that
numerous differing types of power supplies and combinations of differing
types of power supplies could be used to charge the batteries described in the
reference. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d at 807 (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered."); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the
disclosures in a prior art reference "must be evaluated for what they fairly
teach one of ordinary skill in the art.").
Therefore, one of ordinary skill in the art seeking to use a battery as
disclosed in Gartstein for particular applications that require maximum
power would have been led to modify the battery to enable it to be charged
with maximum power, as disclosed in Yamakawa. Gartstein thus does not
teach away from its combination with Yamakawa. Meiresonne v. Google,
Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) ("A reference that 'merely
expresses a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into' the claimed
invention does not teach away." (quoting Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)); In re Mouttet, 686 F.3d 1322,
1334 (Fed. Cir. 2012) (In assessing whether prior art teaches away, that
"better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes."); In re Fulton, 391 F.3d
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Application 14/623,052
1195, 1201 (Fed. Cir. 2004) ("[M]ere disclosure of alternative designs does
not teach away." Rather, teaching away requires clear discouragement from
implementing a technical feature.).
Appellant also argues that Yamakawa's step-up and step-down unit is
designed to charge a car battery, and one of ordinary skill in the art would
not have combined this unit with a unit for charging rechargeable battery
packs for devices as disclosed in Gartstein because "the power, impedance
matching, etc. requirements between the two are so different that the circuits
are not compatible." Br. 5---6.
However, as discussed above, the Examiner's proposed combination
of the relied-upon disclosures of Gartstein and Yamakawa is not based on a
literal bodily incorporation of the step-up and step-down unit disclosed in
Yamakawa into a battery disclosed in Gartstein. Rather, as the Examiner
reasonably determined, one of ordinary skill in the art seeking to use a
battery as disclosed in Gartstein for particular applications that require
maximum power would have been led to modify the battery to enable it to
be charged with maximum power, as disclosed in Yamakawa. Final Act. 4;
In re Keller, 642 F.2d 413, 425 (CCPA) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of a primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."); see also In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review."); and
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
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Therefore, considering the totality of the evidence relied-upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. We accordingly sustain the Examiner's rejection
of claims 1-3, 5, and 7-21under35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1-3, 5, and 7-21 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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