Ex Parte Besser et al

Patent Trial and Appeal Board

May 1, 2014

11849242 (P.T.A.B. May. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/849,242 08/31/2007 David A. Besser 8158P005 5265
8791 7590 05/01/2014
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
AMRANY, ADI
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
05/01/2014 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
____________

Ex parte DAVID A. BESSER, STEFAN MATAN,
and MELVIN J. BULLEN
____________

Appeal 2012-006364
Application 11/849,242
Technology Center 2800
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006364
Application 11/849,242

2
This is an appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-5, 9-29, 36, 38, 39, 42, and 43. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

OPINION

Appellants disclose a “power extractor [that provides power from
power sources to loads and] operates to obtain impedance matching between
the power source and the combination of the power extractor and the load,
and between the load and the combination of the power source and the
power extractor. . . . This impedance matching allows the power source to
provide a greater amount of power than it would without the impedance
matching.” Spec. 7 at [0051].
Claim 1, quoted below, is representative of the claimed invention:
1. A system comprising:
an energy source that provides an unregulated source voltage
and source current;
a load;
a power extractor to transfer power between the energy source
and the load,
wherein the power extractor transfers power with a magnitude
at least partially dependent on a continuously detected power
change, and
wherein power extractor output voltage and output current are
unregulated.
Claims App., Br. 9 (some paragraphing added).

Appeal 2012-006364
Application 11/849,242

3
At the time of the Final Rejection, claims 1-43 were pending, but
claims 6-8, 30-35, 37, 40, and 41 were withdrawn from consideration. Final
Rejection 1. The Examiner rejected claims 1-5, 9-29, 36, 38, 39, 42, and 43
under 35 U.S.C. § 112, second paragraph, as “indefinite for failing to
particularly point out and distinctly claim the subject matter which
[Appellants regard] as the invention.” Id. at 3. The Examiner also rejected
claims 1-5, 9, 10, 12-14, 16, 36, 38, and 39 under 35 U.S.C. § 102(b) as
anticipated by US Patent Publication No. 2005/00521651 (“Willner”). Id. at
4. The Examiner further rejected claims 11, 15, 17-20, 42, and 43 under 35
U.S.C. § 103(a) as obvious over Willner and claims 21-29 under 35 U.S.C. §
103(a) as obvious over the combination of Willner and US Patent No.
7,408,2682 (“Nocentini”). Id. at 7-10.
Appellants appeal each of the anticipation and obviousness rejections.
App. Br. 3. The indefiniteness rejection, however, does not appear in the list
of “Grounds of Rejection to Be Reviewed on Appeal” presented in
Appellants’ Brief. Id. Appellants also do not present any arguments with
respect to this rejection under a separate heading in the “Argument” section
of the Brief. Id. at 3-8. Although the Examiner stated in the Examiner’s
Answer that the failure to “rebut[] or address[] this rejection in the Brief”
constituted a concession with respect to the indefiniteness rejection, Ans. 12,
Appellants did not file a Reply Brief containing arguments directed to the
indefiniteness rejection maintained by the Examiner.3

1 Willner et al., US 2005/0052165 A1, published Mar. 10, 2005.
2 Nocentini et al., US 7,408,268 B1, issued Aug. 5, 2008.
3 Appellants did not file any Reply Brief at all.
Appeal 2012-006364
Application 11/849,242

4
Accordingly, we affirm the indefiniteness rejection as a matter of
form. See Manual of Patent Examining Procedure (MPEP), 8th ed., 8th rev.,
§ 1205.02 (July 2010)4 (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).
The indefiniteness rejection that we affirm applies to all claims that
have not been withdrawn from consideration. As noted above, the Examiner
also rejected these claims as anticipated by or obvious over the prior art.
Although the anticipation and obviousness rejections might be proper under
the Examiner’s conditional interpretation of the claims, there is no dispute
that the actual scope of the claims is indefinite. In order to address the
propriety of the anticipation and obviousness rejections at this time, we
would be required to speculate as to the scope of the claims, an approach we
decline to take. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (it is
improper to “rely[] on what at best are speculative assumptions as to the
meaning of the claims” as the basis for a rejection). Accordingly, we do not
reach the Examiner’s rejections of the claims under §§ 102(b) and 103(a).

ORDER
The Examiner’s rejection of claims 1-5, 9-29, 36, 38, 39, 42, and 43
under 35 U.S.C. § 112, second paragraph is affirmed.

4 The 8th revision of the 8th edition of the MPEP was the version in effect at
the time that Appellants filed their notice of appeal.
Appeal 2012-006364
Application 11/849,242

5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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