Ex Parte Chiasson et al

Patent Trial and Appeal Board

Feb 16, 2016

12693244 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/693,244 01125/2010
31625 7590 02/18/2016
BAKER BOTTS LLP,
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Shane Chiasson
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.
016295.4076 3668
EXAMINER
PATEL, KAMIN! B
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
DLAustinRecordsManagement@BakerBotts.com
tracy.perez@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE CHIASSON, ANAND NUNNA, DAVID ROCK,
MARCELO SARAIVA, and WILLIAM LYNN
Appeal2014-003658
Application 12/693,244
Technology Center 2100
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 According to Appellants, the real party in interest is Dell Products L.P. Br.
2.
Appeal2014-003658
Application 12/693,244
Claim 1 recites the following (disputed limitation italicized):
1. An information handling system, comprising:
a processor;
a memory module coupled to the processor;
a capacitor module associated with the memory module,
the capacitor module comprising an array of capacitors coupled
to a charger; and
a controller coupled to the capacitor module, the
controller configured to:
disable the charger coupled to the array of
capacitors;
after disabling the charger, determine if the
capacitor module is healthy based at least on monitored
operating values of the capacitor module before the
capacitor module is fully discharged, the monitored
operating values including a time duration for each
capacitor in the array of capacitors; and
enable a write back mode for the memo1 y module
if the capacitor module is determined to be healthy.
Br. 13. The other pending independent claims (claims 7 and 15) each
include limitations similar to the italicized limitation. See id. at 14, 15.
The Examiner rejected claims 1-13 and 15-20 under 35
U.S.C. § 102(b) as anticipated by Pecone et al. (US 2007/0033431 Al;
published Feb. 8, 2007) ("Pecone"). Final Act. 3-8.
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Pecone and Davis (US 5,345,583; issued Sept. 6, 1994).
Id. at 8-9.
2
Appeal2014-003658
Application 12/693,244
ANALYSIS
The Examiner found Pecone discloses measuring the capacitance of a
capacitor by discharging and then recharging the capacitor and measuring
the current draw and the time required to recharge. See Ans. 12; Pecone
i-f 13. The Examiner also found Pecone discloses disabling charging of a
capacitor pack and then placing a write cache in write-through mode if the
capacitor pack is not fully charged. See Ans. 11; Pecone i-f 139; Fig. 13, item
1028. Based on these disclosures, the Examiner found Pecone discloses
"after disabling the charger, determine if the capacitor module is healthy
based at least on monitored operating values of the capacitor module before
the capacitor module is fully discharged, the monitored operating values
including a time duration for each capacitor in the array of capacitors" as
recited in claim 1. See Ans. 11-13.
Appellants contend Pecone fails to disclose this limitation because the
disclosed method of measuring capacitance determines whether a capacitor
module is healthy after a capacitor has discharged, not "before the capacitor
module is fully discharged." Br. 6-7 (citing Pecone i-f 13 ). Appellants also
argue that Pecone discloses disabling charging of its capacitor pack at the
end of its process flow; therefore, Pecone does not disclose determining if
the capacitor module is healthy "after disabling the charger." Id. at 8 (citing
Pecone Fig. 10, item 1028). Lastly, Appellants argue although Pecone
discloses operations based on voltage and temperature, Pecone is silent with
respect to determining if the capacitor module is healthy based on monitored
operating values "including a time duration for each capacitor in the array of
capacitors" as recited in claim 1. Br. 10.
3
Appeal2014-003658
Application 12/693,244
We find the Examiner erred by relying on different embodiments of
Pecone, each of which discloses only portions of the disputed limitation, to
evidence anticipation of the disputed limitation in its entirety. In an
anticipation rejection, "it is not enough that the prior art reference ...
includes multiple, distinct teachings that [an ordinary] artisan might
somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must "clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference." Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while "[s]uch picking and choosing
may be entirely proper in the making of [an] ... obviousness rejection ... it
has no place in the making of [an] ... anticipation rejection." Arkley, 455
F.2d at 587-88.
Here, the Examiner cites a first embodiment of Pecone that discloses
determining a capacitor's capacitance (i.e., the capacitor's "health") by
discharging it and then measuring the time required to recharge it. See Ans.
12-14 (citing Pecone i-f 13). But this embodiment does not explicitly teach
measuring the capacitor's health "before the capacitor module is fully
discharged." The Examiner cites a second embodiment of Pecone that
disables the charging of a capacitor pack and determines if the capacitor
pack is not fully charged. See Ans. 11-12 (citing Pecone i-f 139; Fig. 13,
item 1028). However, this embodiment does not explicitly disclose
measuring the health of a capacitor or using a time duration to do so.
Because none of the cited embodiments individually anticipates the disputed
4
Appeal2014-003658
Application 12/693,244
limitation in its entirety, we find that the Examiner erred. See Net MoneyIN,
545 F.3d at 1371.
Accordingly, we do not sustain the Examiner's rejection of claim 1,
nor do we sustain the Examiner's rejection of independent claims 7 and 15,
and dependent claims 2-6, 8-13, and 16-20, each of which recites a similar
limitation. App. Br. 13-16. Regarding the obviousness rejection of claim
14, we conclude the Examiner erred by failing to provide an adequate
rationale to combine or otherwise modify the aforementioned embodiments
of Pecone in the claimed manner. See Final Act. 8-9; KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 415-21 (2007).
Nevertheless, we conclude it would have been obvious to one of
ordinary skill in the art to modify Pecone' s teachings to arrive at the claimed
invention. The primary difference between the system disclosed by Pecone
and the disputed claim limitation is that the system disclosed by Pecone
measures the health of a capacitor while the capacitor is recharging, whereas
the disputed claim limitation requires determining whether a capacitor is
healthy before the capacitator is fully discharged. Compare Pecone i-f 13,
with Br. 13 (Claim 1). Given Pecone's teachings and the well-known fact,
of which we take official notice, that a capacitor's exponential charge and
discharge curves are inversely related, see Stephen L. Herman, Delmar's
Standard Textbook of Electricity 553-54 (Cengage Leaming, 4th ed. 2009)
("Herman"), for the reasons discussed below, it would have been obvious to
one of skill in the art to measure the health of a capacitor before the
capacitator is fully discharged.
Measuring the health of a capacitor "before the capacitor module is
fully discharged" would have been obvious to try because there are a finite
5
Appeal2014-003658
Application 12/693,244
number of charging states (before, during, or after charge or discharge)
during which to measure the health of a capacitor, and one of ordinary skill
in the art could have pursued these options with a reasonable expectation of
success. See KSR, 550 U.S. at 421; Pecone Fig. 5; i-fi-f 13, 97; Herman at
553-54. Moreover, this modification is simply a combination of familiar
elements according to known methods that yields predictable results. See
KSR, 550 U.S. at 416 ("The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results."). Finally, measuring the health of a capacitor before the
capacitor is fully discharged is within the "inferences and creative steps that
a person of ordinary skill in the art would employ." See KSR, 550 U.S. at
418; see also Pecone i-f 11 ("Whether using a battery or a capacitor pack ...
it is important to monitor the energy source to insure that the energy source
continues to have the capacity to store enough energy to perform the backup
operation; otherwise, write cache data may be lost.").
As our analysis deviates from the Examiner's reasoning, we designate
our conclusion to be new grounds of rejection for claims 1-13 and 15-20
under 35 U.S.C. § 103(a) over Pecone, and claim 14 under 35 U.S.C.
§ 103(a) over Pecone and Davis.
DECISION
The decision of the Examiner to reject claims 1-13 and 15-20 under
35 U.S.C. § 102(b) is reversed.
The decision of the Examiner to reject claim 14 under
35 U.S.C. § 103(a) is reversed.
We enter a new ground of rejection for claims 1-13 and 15-20 under
6
Appeal2014-003658
Application 12/693,244
35 U.S.C. § 103(a) over Pecone.
We enter a new ground of rejection for claim 14 under
35 U.S.C. § 103(a) over Pecone and Davis.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record.
REVERSED
37 C.F.R. § 41.50(b)
7
Notice of References Cited
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY
A US-
B US-
c US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY
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11 ~ I
Application/Control No.
12693244
Examiner
PATEL,KAMINI B
U.S. PATENT DOCUMENTS
Name
FOREIGN PATENT DOCUMENTS
Country
NON-PATENT DOCUMENTS
Name
Applicant(s)/Patent Under
Reexamination
Art Unit
I Page of
Classification
Classification
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
u Delmar's Standard Textbook of Electricity, Fourth Edition, Cengage Learning, Inc Copyright 2009, Stephen L. Herman
v
w
x
*A copy of this reference 1s not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.

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