Ex parte DOWE

Board of Patent Appeals and Interferences

Mar 30, 1999

08099277 (B.P.A.I. Mar. 30, 1999)

Application for patent filed July 29, 1993.1
The rejection under 35 U.S.C. § 112 was obviated by the entry of the after final amendment filed2
March 31, 1995 (paper no. 8).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID R. DOWE
_____________
Appeal No. 96-0656
Application 08/099,2771
______________
ON BRIEF
_______________
Before THOMAS, FLEMING and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner's final rejection of claims 7-18,2
which are all of the claims pending in this application.
Appeal No. 96-0656
Application 08/099,277
2
BACKGROUND
The invention is directed to a battery cell charging apparatus which is to be used
with multiple battery cells of the same size. The charging apparatus performs a polarity
check to determine if at least one battery cell is installed with reverse polarity. The
charging apparatus also performs a discrimination check to determine if only rechargeable
battery cells are present in a charging well. The charging apparatus compares the voltage
across the battery cells to reference voltages produced by a resistive network in the
determinations of polarity and battery type discrimination. In response to the
determinations, the charging apparatus will disable the charging of the battery and provide
and indication of the status of the battery cell charging.
Appellant has indicated that claims 7-18 stand or fall together as a single group.
(Brief at page 4.)
Independent claim 7 is a representative claim and reproduced as follows:
7. A battery cell charging system comprising:
a battery receiving well adapted to receive a plurality of separate
battery cells each of the same size having first and second electrical
contacts that define a battery voltage across the battery cells;
a transformer circuit that produces a transformer reference voltage
and an output charging current for simultaneously charging the
separate battery cells;
Appeal No. 96-0656
Application 08/099,277
3
a reference network that produces a plurality of reference network
voltages in response to the transformer reference voltage;
a reverse polarity detector circuit that determines if the battery voltage
is less than a first predetermined one of the reference network
voltages, thereby indicating at least one of the battery cells was
received in the battery receiving well with an incorrect electrical
polarity;
a battery type discriminating circuit that determines if the battery
voltage is greater than a second predetermined one of the reference
network voltages, thereby indicating at least one of the battery cells in
the receiving well is not a rechargeable battery cell; and
a charging circuit coupled to the transformer circuit and to the battery
cells that operates in a non-charging mode if the reverse polarity
detector circuit determines that at least one of the battery cells was
received in the battery receiving well with an incorrect polarity or if the
battery type discriminating circuit determines that at least one of the
battery cells is not a rechargeable battery cell and otherwise operates
in a charging mode for charging the battery cells.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:

Dey 4,571,533 Feb. 18, 1986
Hodgman et al. (Hodgman ( '144)) 4,577,144 Mar. 18, 1986
Patino et al. (Patino) 5,184,059 Feb. 02, 1993
The prior art references of record relied upon by the Board in rejecting the appealed
claims are:
Dey 4,571,533 Feb. 18, 1986
Hodgman et al. (Hodgman ( '144) 4,577,144 Mar. 18, 1986
Hodgman et al. (Hodgman ( '243) 4,628,243 Dec. 09, 1986
Claims 7-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Dey
Appeal No. 96-0656
Application 08/099,277
Appellant filed an appeal brief, June 19, 1995, (Paper No. 12). We will refer to this appeal brief as3
simply the brief. In response to the examiner 's answer, appellant filed a reply brief, September 18, 1995,
(Paper No. 14). We will refer to this reply brief as simply the reply.
The Examiner responded to the brief with an examiner's answer mailed August 15, 1995, (Paper4
No. 13). We will refer to this examiner's answer as simply the answer. The Examiner responded to the
reply with an supplemental examiner's answer mailed November 2, 1995, (Paper No. 15). We will refer to
this supplemental examiner's answer as simply the supplemental answer.
4
in view of Hodgman ('144) and Patino.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
appellant, we make reference to the brief and answer for the details thereto.3 4
OPINION
After a careful review of the evidence before us we disagree with the Examiner that
claims 7-18 are properly rejected under 35 U.S.C. § 103 and we will not
sustain the rejection of claims 7-18. We reverse and make new grounds of rejection under
37 CFR § 1.196(b). In addition, we raise additional issues which appellant and the
examiner should consider in the event this subject matter is further prosecuted.
Turning to the rejection of claims 7-18, appellant argues that the combination of
Dey, Hodgman ('144) and Patino would not provide a charging system having the claimed
reference network, reverse polarity detector circuit and battery type discriminator circuit.
(See brief at page 6, paragraph 3.) We agree. Appellant further argues that none of the
systems relate to multiple batteries. (See brief at pages 5-6; page 6, paragraph 3.) We
disagree. Dey is directed to a single battery housing for an
Appeal No. 96-0656
Application 08/099,277
5
automobile battery. An automobile battery would have multiple separate battery cells of
the same size and each would have internal contacts to each other. Hodgman ('144) and
Patino do not clearly teach multiple separate battery cells.
Dey is relied upon by the Examiner to teach the use of a "reverse polarity detector
circuit" and that the charging circuitry "operates in a non-charging mode if the reverse
polarity detector determines that at least one of the battery cells was received in the battery
receiving well with an incorrect polarity" as set forth in the language of claim 7. Clearly,
Dey does not operate the charging circuitry in a non-charging mode in response to reverse
polarity detections. Dey merely detects the reverse polarity and sounds an alarm.
Appellant argues that the combination of the three references lack "a reference
network that would enable such networks." (See brief at page 6, paragraph 3.) We
disagree. The claims do not require the reference network to "enable" the other circuits,
but only that the reference are voltages used by the circuits. Furthermore, Hodgman ('144)
does disclose the use of a reference voltage source, but not how the voltage is formed. A
resistive network was a common means to provide a reference voltage by a voltage
divider circuit. (See Hodgman ('243) discussed infra.) None of
the references clearly teach or suggest the reference network that "produces a plurality of
reference network voltages in response to the transformer reference voltage" as set forth in
claim 7 and the Examiner has not provided a motivation to modify the combina-tion of
Appeal No. 96-0656
Application 08/099,277
6
references. The Examiner has cited Dey for teaching this feature and cited to Col. 1, lines
37-40 of the reference. We do not find any teaching at this point in the Dey reference
concerning multiple reference voltages.
Appellant argues the combination of references and specifically that the Patino
reference discloses recharging of battery packs using a pocket and this is not directed to
the problem of mixing of batteries as is the claimed invention. (See brief at pages 4-5).
We agree. The Examiner has not provided adequate motivation for combining the
teachings of Patino with those of Dey and Hodgman ('144). Appellant further argues that
the references do not mention "simultaneously charging separate battery cells." (See brief
at page 4.) We agree, but note that the language of claim 7 does not explicitly require
"simultaneously" charging, therefore the argument is beyond the scope of the claim
language.
We find that the examiner has not met the burden of setting forth a prima facie case
of obviousness in rejecting claims 7-11. Our reviewing court has stated that obviousness
is tested by "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Here, the prior art contains neither a teaching nor a
suggestion to include a polarity detector which controls the charging circuit and the use of
multiple reference voltages in the control of the charging circuitry as set forth in the
Appeal No. 96-0656
Application 08/099,277
7
language of claim 7 discussed above.
Furthermore, it appears to us that the examiner relied on hindsight in reaching his
obviousness determination. However, our reviewing court has said, "[t]o imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to fall victim to
the insidious effect of a hindsight syndrome wherein that which only the inventor taught is
used against its teacher." W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983).
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the Examiner. Upon evaluation of all
the evidence before us, it is our conclusion that the evidence adduced by the examiner is
not sufficient to establish a prima facie case of obviousness with respect to
claim 7. Accordingly, we will not sustain the examiner's rejection of claim 7 under 35
U.S.C. § 103.
Since all the limitations of independent claim 7 are not suggested by the applied
prior art, we cannot sustain the examiner's rejection of appealed claim 8 through 11 which
depends therefrom, under 35 U.S.C. § 103.
Appeal No. 96-0656
Application 08/099,277
8
With respect to claims 12-18, we do not comment on the art rejection as it applies
to claims 12-18 because we do not find the claims sufficiently definite to formulate an
opinion as discussed in the new grounds of rejection under 37 CFR § 1.196(b)
below.
NEW GROUNDS OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the following new grounds of
rejection.
We emphasize here that claim 12 contains unclear language which renders the
subject matter thereof indefinite for the reasons stated below as part of our new rejection
under 35 U.S.C. § 112, second paragraph. We find that it is not possible to apply the prior
art to claims 12 -18 in deciding the question of obviousness under
35 U.S.C. § 103 without resorting to speculation and conjecture as to the meaning of the
questioned limitation in claim 12.
This being the case, we are therefore constrained to reverse the examiner's
rejection of claims 12 -18 under 35 U.S.C. § 103 in light of the holding in In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). This reversal of the examiner's
rejection is based only on the procedural ground relating to the indefiniteness of these
claims and therefore is not a reversal based on the merits of the rejection of claims
Appeal No. 96-0656
Application 08/099,277
We have briefly reviewed the specification in this paragraph and question how capacitor C35
discharges to a voltage level that is "higher than the zener diode reference voltage level." The capacitor C3
would appear to be charged to a value V which is higher than V . Therefore, the capacitor would eitherf z
charge higher or discharge lower than V .z
9
12-18.
Claims 12-18 are rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
Claim 12 and its dependent claims 13-18, are considered indefinite because the
claim recites "a charging circuit ..." in paragraph 4 and "a charging circuit ..." in paragraph
8 of the claim. It is unclear whether appellant intends to reference the charging circuit in
paragraph 8 to the prior charging circuit introduced in paragraph 4 or to introduce a
second charging circuit. We have reviewed the specification and drawings and do not find
another charging circuit. We do find a "quick charge cycle followed by a trickle charge
cycle, which most effectively charges secondary batteries." (See specification at page 9,
paragraph 2.) Does appellant merely desire to claim a single charging circuit or does5
appellant desire to claim separate charging circuits or a single circuit with two charging
cycles? If appellant desires merely a single charging circuit in paragraph 4 with a
reference thereto in paragraph 8 of claim 12, then the prior art rejection by the examiner
would be reversed in a similar manner as with respect to claim 7 and the new grounds of
rejection under 35 U.S.C. § 103 would similarly apply.
Claims are considered to be definite, as required by the second paragraph of 35
Appeal No. 96-0656
Application 08/099,277
A copy of Hodgman et al. ; US Patent 4,628,243 was cited by appellant in the information6
disclosure statement filed on July 29, 1993. A copy of the reference is NOT ENCLOSED with this
decision.
We have rejected only claim 7 of the instant application in order to show the appellant and the
Examiner the breadth of the claimed invention. We do not give an opinion as to the novelty or
obviousness of the claimed invention beyond claim 7. We have not applied prior art against claims
12-18 due to the problems noted above with determining the scope of the claims. The examiner
should review the prior art and claims to make any further rejections as the Examiner deems appropriate.
10
U.S.C. § 112, when they define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958,
189 USPQ 149, 151 (CCPA 1976). Here, claims 12-18 do not define the metes and
bounds of a claimed invention with a reasonable degree of precision and particularity.
Claim 7 is also rejected under 35 U.S.C. § 103(a) over Hodgman et al ('243) in6
view of Hodgman et al.('144) and Dey.
The Hodgman ('243) patent discloses a battery charging system for charging
rechargeable batteries. Hodgman ('243) discloses a transformer for providing a reference
voltage V and providing the charging current. Hodgman ('243) teaches the use of acc
resistive network having plural resistors, 53, in a voltage divider to produce reference
voltages used in the processing within the charger circuitry. Hodgman ('243) disclose in
Figures 1 and 2 that the charging of separate same sized battery cells may be done
individually or with plural cells with the same charging circuit.
Hodgman ('243) does disclose a case, 15, for holding a single battery in Figure 1,
but does not explicitly disclose a battery receiving well adapted to receive the plurality of
Appeal No. 96-0656
Application 08/099,277
11
cells, but there would inherently have been a required structure to hold the plural batteries
in electrical and physical contact with the charging circuity as shown in Figure 2. (See col.
3, paragraph 5.) Hodgman ('243) does not disclose the use of the battery voltage, across
the plural cells, as the parameter to discriminate between the primary and secondary
batteries. Hodgman ('243) discloses the user of conductive bands, 26 which are sensed,
complete the circuit and enable the charging if the correct type of battery is present. (See
col. 3, paragraphs 2-4.) Improper battery type operates the charging system in a non-
charging mode. Hodgman ('243) also discloses using the conductive band and an
impedance which produces a voltage which is compared to
reference voltages to determine if the battery is a rechargeable type. (See col. 5,
paragraph 2.) The conductive bands are placed in a manner so that the circuit will not
operate if the battery is inserted into the charger with reverse polarity. This too would
disable the charging of the battery cells by placing the charger in a non-charging mode.
(See col. 3, paragraph 4.) In Figure 4 Hodgman ('243) disclose a combination of the
conductive bands and sensing an impedance using a voltage divider.
Hodgman ('144) discloses a battery charging apparatus including discrimination
sensing circuitry to determine if the battery is of the type which is rechargeable. Hodgman
('144) disclose that the voltage of a primary battery is higher than that of a secondary
Appeal No. 96-0656
Application 08/099,277
12
battery. The higher voltage indicating that an improper battery type is present in the
charger and the charger would operate in a non-charging mode. The measured voltage is
compared to a reference voltage or threshold. (See col. 3, paragraph 3.) Hodgman ('144)
further disclose various other methods of measuring impedance and ripple voltage for
battery type discrimination. It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the teachings of Hodgman ('243) and Hodgman ('144)
since each is related to recharging of rechargeable battery cells. Hodgman ('144) teaches
discrimination of battery type rather than using conducive bands on rechargeable
batteries. It would have been obvious to one of ordinary skill in the art at the time of the
invention to modify the apparatus of Hodgman ('243) with the disclosed method of
Hodgman ('144) using the known relationship of cell voltages between primary and
secondary battery types to obviate the need for conductive bands. With the removal of the
conductive bands the skilled artisans would have also needed to provide for the sensing of
reverse polarities and disabling the charger as taught by Hodgman ('243). The skilled
artisan would have
found the Dey reference. Dey teaches a methodology to detect reverse polarity in a
battery recharging system. The Dey patent also disclose a battery charging system which
provides a signal to an operator in the occurrence of a reverse polarity situation rather than
Appeal No. 96-0656
Application 08/099,277
13
disabling operation. Dey disclose the charging of automobile batteries which are an
accumulation of series connection of similar sized cells which form a larger battery cell.
Dey disclose the parallel connection of a resistor, 705, a sound signal means, 702, and a
diode, 703, to limit current flow. Related to the current flow in the reverse direction would
be a negative or reversed voltage. Dey is a teaching that a parameter in the combined
cells may be used to indicate the presence of a reverse polarity condition. In a separate
multiple cell arrangement as taught by Hodgman ('243), the sensing of voltage rather than
current flow would be desirable as
with the use of the bands. Therefore, the skilled artisan would have been motivated to
sense voltage. If a battery is reverse polarized, the voltage would be less than a reference
voltage or threshold. Furthermore, it would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the teachings of Dey with those of Hodgman
('243) and Hodgman ('144) since the skilled artisan would have desired to have a
replacement for the sensing of the combination of the conductive band and resistive circuit
if the conductive bands were removed. The combination of
the teaching of Hodgman ('243) concerning the reference voltage for sensing the
appropriate resistance in the rechargeable battery would have similarly motivated the
skilled artisan to use the sensed voltage of the battery cells to determine polarity.
Appeal No. 96-0656
Application 08/099,277
14
CONCLUSION
To summarize, the decision of the examiner rejecting claims 7 through 18 under
35 U.S.C. § 103 is reversed. The decision of the examiner is reversed. A rejection of
claims 12-18 under 35 U.S.C. § 112, second paragraph, has been applied by the Board
along with a rejection of claim 7 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gas. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be considered final
for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, 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 proceedings
(§1.197(c)) as to the rejected claims.
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Appeal No. 96-0656
Application 08/099,277
15
Board of Patent Appeals and Interferences upon the same record. . . .
REVERSED - 37 CFR § 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
vsh
Appeal No. 96-0656
Application 08/099,277
16
Thomas H. Close
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201